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.

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

 

 

CITYSTICKS & POPSICLE tale of two trademarks Reply

CITYSTICK picCITYSTICKS & POPSICLE are two different trademarks for tasty frozen treats.  These two trademarks are owed by two different companies and are both registered with the USPTO.  USPTO trademark registration grants the owner of each trademark exclusive rights to use the registered trademark when selling, advertising and promoting their frozen treats.  This means that the words CITYSTICKS & POPSICLE are off limits to any other person or company selling frozen treats.  For example, if another person or company uses either of the trademarks to sell or advertise competitive goods without permission of the trademark owner they may be infringing the trademark and might be asked by the owner to stop using the trademark (i.e. to cease and desist from infringing the trademark).

POPSICLE is the older of these two trademarks and it’s no coincidence that the CITYSTICKS packaging pictured to the left and below does not use the trademarked term POPSICLE.  Instead the packaging reads, “ice pops with personalities.”  (As you can see, I quickly ate half the CITYSTICKS ice pop before I thought to photograph it for this post.  It was tasty).CITYSTICKS USPTO screen shot

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

vk@kasterlegal.com

See also: more on the POPSICLE trademark and protecting exclusive trademark rights  at http://wp.me/p10nNq-3t, other posts on exclusive trademark rights at https://iplegalfreebies.wordpress.com/category/t-r-a-d-e-m-a-r-k/trademark-exclusive/; USPTO (U.S. Patent & Trademark Office) resources at www.uspto.gov; #trademark, #branding, #valueyourbrand @iplegalfreebies and www.kasterlegal.com

Inspired by 19th Century Imperial Robes (Copyright & Design) Reply

Splendid 19th century imperial robes from China inspire modern fashion reddesigns in a new costume exhibit at the Metropolitan Museum of Art (titled: China Through the Looking Glass).  A fascinating element of this exhibit is that the imperial robes and the modern, couture gowns are displayed side-by-side.  While the styles, silhouettes and lines of the old and new fashions are drastically different, the inspiration linking the old and new is clear, including, borrowed colors, designs and artwork.

Borrowing colors, designs and artwork isn’t always free and easy.  Copyright laws in countries around the world vest the original creators and owners of designs and artwork with a bundle of exclusive rights to control the use and copying of their original designs and artwork.  However, these exclusive rights only last for a finite period of time. The duration of these exclusive rights varies country by country depending upon the national copyright laws.  The copyright laws in each country outline the length of time that the exclusive rights last (also known as the “term of copyright”).  Once the term of copyright expires, the work becomes part of the public domain and is free to use and copy.

Treat yourself to a visit of this exhibit, if you can. I give it two glamorous thumbs up.

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

vk@kasterlegal.com

See also: other blog posts on public domain at http://wp.me/p10nNq-ft and www.iplegalfreebies.wordpress.com/category/public-domain; a blog post on Traditional Knowledge of indigenous people and tribes which can be an exception to public domain works at http://wp.me/p10nNq-AC; information about the MET costume exhibit at http://www.metmuseum.org/exhibitions/listings/2015/china-through-the-looking-glass/images; @iplegalfreebies and www.kasterlegal.com.

 

Female Watson: Great for many reasons including Copyright Reply

WatsonFabulous, smart, strong, witty, problem solving female characters are always great.  Recently, Hollywood has been recasting some traditionally male characters like Watson (from Sir Arthur Conan Doyle’s famous Sherlock Holmes stories) as women.  Additionally, Hollywood has been developing new central characters from the Doyle’s classics.  For example, Watson’s wife (barely mentioned or developed in Doyle’s Sherlock Holmes stories) is becoming a featured charter in the new BBC series based on the literary classic.  Also Lucy Liu is featured as Dr. Joan Watson in Elementary, a new series set in NYC.  This is a great trend for developing new, dynamite leading ladies.

Interestingly, this tend also has potential copyright advantages for the creative folks writing these new leading ladies based on traditionally male roles.  The “copyright advantage” is that creating new original characters by definition creates new character traits, storylines and crime solving adventures which the owners of the new TV series can potentially own, control and monetize to a greater degree than if the stories, characters and adventures are taken from Sir Arthur Conan Doyle’s books.  This is because some of the original story elements and characters from Sir Arthur Conan Doyle’s books and stories, like Holmes and Dr. John Watson, have entered into the public domain and others are still under copyright protection and must be licensed from Doyle’s Estate.  (See this earlier post,  http://wp.me/p10nNq-z8 , for more information on this topic).

I love Lucy Liu as Dr. Joan Watson!  How about a lady Holmes, next?  Holmes

Happy Halloween!

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

vk@kasterlegal.com

See also: earlier blog posts on the topic of “public domain,” https://iplegalfreebies.wordpress.com/category/public-domain/; other copyright and public domain resources, http://www.copyright.gov, http://copyright.cornell.edu/resources/publicdomain.cfm, http://creativecommons.org/publicdomain/; @iplegalfreebies and www.kasterlegal.com.

Can I copyright my website’s content? Reply

Yes – copyright is a form of intellectual property that protects original works of authorship copyrightincluding content on a website. For example, original text, videos, graphics, animation, photographs, music, sound recordings, illustrations, translations and other original content featured on a website can be copyrighted.

Two ways to use copyright to protect original content on a website are: 1) to use a copyright notice on the website, and 2) copyright registration with the U.S. Copyright Office.

A few points to keep in mind regarding copyrighting website content:

  • Using a date range in the copyright notice may be beneficial if new content is posted periodically.  For example, © 2011-2014 Ima Starr.  All rights reserved.
  • An application for copyright registration only covers the original content that is submitted with the application and will not include future updates.
  • If content on the website is updated frequently, it may be a good idea to file new applications for copyright registration periodically, as needed.
  • The author, creator, and owner of the content may or may not be the same person. This is an important component to consider and sort out before applying for copyright registration.
  • If the website features original creative content such as books, music, jewelry designs, photographs, architectural designs, fabric designs, photographs or other original works of authorship it may be a good idea to also register these works with the U.S. Copyright Office before making them available on the website.
  • Note, that copyright does not protect names, logos, titles or slogans. In some cases, these may be protectable as trademarks.

Here are links for more information on how to write a copyright notice, adding a copyright notice to a website and applying for copyright registration with the U.S. Copyright Office.

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

vk@kasterlegal.com

See also: U.S. Copyright Office Circular 66 titled, Copyright Registration for Online Works at http://copyright.gov/circs/circ66.pdf and U.S. Copyright Office on “What does copyright protect” at http://copyright.gov/help/faq/faq-protect.html#idea; @iplegalfreebies and www.kasterlegal.com.

Using my photo? Did I inadvertently give rights away by posting it online? Reply

It’s so easy and fun to share photographs online that folks often give away rights to their photographs without even realizing it.  HOW DOES THIS HAPPEN?  The terms, conditions and licenses that the photographer agrees to when posting a photograph to various social media and photo-sharing websites often grant other folks broad rights to use posted photographs.  Keep in mind that every social media and photo-sharing website has different terms, conditions and licenses that are agreed to automatically simply by USING the website and POSTING photographs and other content.  These terms, conditions and licenses are modified and updated frequently.

teen's flicker photo

Photo: Justin Ho-Wee Wong

Here is an interesting and fairly haunting example:  A photograph of a teenager was taken by her youth counselor and posted to his to Flickr account under a broad Creative Commons license that allowed others to use his work in any way, including for commercial purposes, if they credited the photographer. (See the inserted photo).  A slightly edited version of the photograph ended up in an advertising campaign for Virgin Mobil Australia. A lawsuit followed.

THE TAKE AWAY: Read the terms, conditions and licenses that you are agreeing to when using and posting photographs and other content to social media and photo-sharing websites.  Most popular social media and photo-sharing websites, including FACEBOOKPINTEREST and TWITTER have fairly broad terms, conditions and licenses that change frequently.  Websites post their terms, usually at the bottom of the webpage. These same terms that often give other folks broad rights to use posted content,  also contain the steps to follow if your photographs or other content are being used without your permission on the site and you want to request that it be taken down.

This post was inspired by my friend Mel and a host of social media comments about a photograph that ended up on a series of KEEP CALM shirts.

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

vk@kasterlegal.com

See also: Articles about the Virgin Mobil example above from the Sydney Morning Herald and The New York Times; photo of a Virgin Mobil Ad; Flickr’s Creative Commons licenses at https://www.flickr.com/creativecommons/; other blog posts on photo copyright at https://iplegalfreebies.wordpress.com/category/copyright-photos; @iplegalfreebies and www.kasterlegal.com.

Trademark: to keep bands called THE SUPREMES from popping up in every State Reply

“Yeah, I know and can appreciate what you do (as a trademark attorney working with musicians). Back in the day, different bands called THE SUPREMES were popping up in every State. You can’t have that.” A jazz musician friend said this to me the other day and it was music to my ears.

from the USPTO online database

from the USPTO online database

This is right on point. For a band like THE SUPREMES, who became the most popular female group of the Sixties, owning the trademark of their name grants the trademark owner (Motown Records and now Motown Records’ successor) the exclusive right to use the name “THE SUPREMES” for various music performance and recording services. [USPTO Reg. No. 1003076]. Owning the trademark rights in the name of your band grants the trademark owner the exclusive right to use the trademarked band name for specific uses – like music performance and recording services. This can be a tool to keep other bands or music groups from performing under the same name or a confusingly similar name without permission of the trademark owner.

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

vk@kasterlegal.com

See also: the USPTO TESS data base at http://www.uspto.gov/; a copy of the USPTO Certificate of Trademark Registration for THE SUPREMES, USPTO Reg. No. 1003076; The Supremes bio at http://rockhall.com/inductees/the-supremes/ ; Baby Love on YouTube at http://www.youtube.com/watch?v=23UkIkwy5ZM; @iplegalfreebies and www.kasterlegal.com.

WORLD CUP – National Teams & Big Brands out on the field Reply

While watching the US play Ghana yesterday in the World Cup, I couldn’t help but notice that in soccer ballsaddition to the rivalry between the two national teams on the field… there was also a competition between famous brands on the field too.  Adidas, Nike and Puma were the three famous brands and trademarks that I noticed all over the field, players, officials, equipment and gear.  Adidas trademarks were on the game ball, officials and frequently appeared on the stadium’s sidewall advertising. Nike’s swoosh trademark was on the US jerseys and many cleats.  Puma’s leaping-cat trademark was prominently featured on Ghana’s jerseys.

Adidas, Nike and Puma are all famous brands.  Nike owns nearly 300 USPTO trademarks including their famous swoosh.  Adidas owns close to 150 USPTO trademarks including their famous three stripes.  Puma also owns many USPTO trademarks featuring its leaping cat.

Flashing trademarks out on the field, and World Cup endorsements is big business.  According to a recent Bloomberg Businessweek article, Nike is the largest sportswear company in the world, with $25 billion in revenue.  Adidas (based in Germany) is a close second with $20 billion in revenue. Combined, these two brands control 70 % of the market for soccer gear.  Soccer is a big focus for Adidas and the brand has a long history with soccer sponsorship, including sponsoring FIFA since 1970.  Nike joined the soccer sponsorship game more recently in 1994 when the US hosted the World Cup.

Enjoy watching the rivalries play out during the World Cup this summer!  National Teams (and the sponsoring brands) will be giving it their all.

Great game last night. Thrilling 2-1 victory by the US over Ghana.

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

vk@kasterlegal.com

See also FIFA stats on the US v Ghana game at http://www.fifa.com/worldcup/matches/round=255931/match=300186512/index.html#nosticky; the USPTO TESS data base at http://www.uspto.gov/; Bloomberg Businessweek article by Brendan Greeley, titled “Shootout Can Nike Beat Adidas at Soccer?”; Scores online at http://www.fifa.com/worldcup/index.html and http://msn.foxsports.com/soccer/schedule?competition=12&season=2014; @iplegalfreebies and www.kasterlegal.com.

One can love chicken & Bob Marley tunes (ONE LOVE trademark dispute settles) 2

The ONE LOVE trademark dispute between Bob Marley’s estate and Raising Cane’s tess picchicken finger restaurant raises some interesting trademark and copyright issues. According to Louisiana newspapers, the trademark dispute recently settled on undisclosed terms; however, the issue at the heart of the dispute is interesting.

THE ISSUE: Trademarking someone else’s song title for restaurant services.

THE STORY: In 2005, Raising Cane’s chicken finger restaurant obtained a USPTO registered trademark for ONE LOVE to be used to sell “restaurant services” (Reg. No. 3033511).  This same phrase ONE LOVE is part of the title and refrain to the famous Bob Marley tune, “One Love/People Get Ready,” recorded with his band The Wailers.  In 2007, Marley’s estate (represented by Fifty-Six Hope Road Music) applied for a USPTO trademark registration for ONE LOVE for “hotel, bar, and restaurant services” but was refused trademark registration because of the pre-existing ONE LOVE trademark registered to Raising Cane’s for similar services.  (A likelihood-of-confusion refusal).  The dispute escalated, the courts became involved and evidently the parties recently settled on undisclosed terms.

THE SCOOP: As demonstrated by this series of events, the title of a song will not necessarily block or cancel a USPTO trademark application or registration.  Songs and original music are protected by copyright laws; however, copyright protection does not extend to short phrases and titles.  The USPTO trademark registration system is available for protecting short phrases.  Timing of a USPTO application is also a determinative factor.  For example, if Bob Marley’s estate had applied for a ONE LOVE trademark to be used with restaurant and related services BEFORE Raising Cane’s applied for it, then the outcome would likely be reversed and Marley’s estate would have blocked Raising Cane’s trademark application.

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

vk@kasterlegal.com

See also: “One Love” dispute transfer order at http://www.scribd.com/doc/206584538/One-Love-dispute-transfer-order; an earlier blog post: Title Copycats; News articles: Raising Cane’s, Bob Marley estate reach agreement by Joe Gyan Jr, Bob Marley’s estate’s legal saga over Raising Cane’s ‘One Love’ to play out in Louisiana by Emily Lane on 2/11/14, and Raising Cane’s, Bob Marley’s estate settle ‘One Love’ slogan dispute by Diana Samuels on 5/23/14; the USPTO trademark search at http://www.uspto.gov/ @iplegalfreebies and www.kasterlegal.com.

Imitating Others On Social Media Reply

photo(2)Social media sites generally frown upon users who imitate others and list impersonation as a no-no within their Terms Of Use and Privacy Policy.  By using, joining or registering with a social media site, folks “agree to” and “accept” the terms and policies of the social media site.  Note, that the terms and policies of a social media site (that you should, although, may have never read) apply merely by the simple act of using the site, joining or registering.

Imbedded within these terms and policies are several common elements that relate to impersonation and the treatment of imitators.  Often, these are listed as things that a user is permitted to do and not do.  “Shall not” language is commonly used in these lists (perhaps modeled off the Ten Commandments).  Here are a few examples:

THOU SHALT NOT (as per terms and policies of various social media sites):

  • provide any false personal information on Facebook, or create an account for anyone other than yourself without permission [excerpt from Facebook’s Statement of Rights and Responsibilities]
  • create any account for anyone other than yourself without such person’s permission [excerpt from Foursquare’s Terms Of Use]
  • use a User Name that is the name of another person with the intent to impersonate that person [excerpt from Foursquare’s Terms Of Use]
  • post content or take any action on Facebook that infringes or violates someone else’s rights or otherwise violates the law [excerpt from Facebook’s Statement of Rights and Responsibilities]
  • upload, download, post, submit or otherwise distribute or facilitate distribution of any Content on or through the Service, including without limitation any User Submission, that:
    • infringes any patent, trademark, trade secret, copyright, right of publicity or other right of any other person or entity or violates any law or contractual duty;
    • you know is false, misleading, untruthful or inaccurate;
    • impersonates any person or entity, including any employee or representative of Foursquare  [excerpt from Foursquare’s Terms Of Use]

These are short, illustrative excerpts from the Terms and Policies currently posted on the Facebook and Foursquare sites.  The Terms and Policies also include information on how to report imitators.  Generally, a valid imitation claim will result in the imitator being removed from the site and possibly forfeiting other privileges and use of the site as well.  While Terms and Policies are subject to change, discouraging imitation will likely remain standard protocol.  Social media sites have a vested interest in discouraging imitators on their sites, because, this keeps their sites user friendly for original celebrity users.

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

vk@kasterlegal.com

The Terms of Use and Privacy Policy for various social media sites can generally be found with a Google Search or are available on the social media site, often at the bottom on the login page. 

See also: a related post on What to do if someone is using your stuff on social media sites; The Terms of Use and How to Report Claims of Intellectual Property Infringement posted on Facebook at https://www.facebook.com/legal/terms and https://www.facebook.com/help/www/39922488347420; @iplegalfreebies and www.kasterlegal.com.