Tesla shows that little things in a name can be everything. But trademarks are hard to establish, and feed off a company’s first accomplishments. Name changes – even small ones – have big implications.
Tesla announced that it is changing its name from Tesla Motors to Tesla. When they founded the company around the beginning of the century, the “motors” part of the name no doubt was critical. Perhaps they wanted to be seen as an alternative automobile company, and the founders no doubt liked the majesty of including the term “motors,” like General Motors. Only big companies can make and sell cars, and adding Motors helped reinforce Tesla’s place, and aspirations, in the industry.
Now, 13 years later, Tesla feels handcuffed by “motors” since it is finding other markets for the batteries it developed as part of its electric car business. With its solar-powered roof tile home battery systems from its acquisition of Solar City Corp, Tesla is more than cars. It seems like a natural to drop “motors,” and besides, like with most marks, people tend to refer to the company by its first name, if the second part is a more descriptive term, like “motors.” But if your mark is “General Motors,” then you are unlikely to be referred to as “General,” since “General” is, well, so general. I think of the scene in the 2000 movie The Adventures of Rocky and Bullwinkle (high-minded literary analogies are my stock-in-trade, and I don’t mind repeating them), when a meeting takes place with several characters by the names General Admission, General Foods, and General Store.
Generally speaking, names like “general something” are about bigness, leaning on public recognition of General Foods (waning), General Motors and General Mills, among others. If you want to sound big for certain products – or are at least targeting people old enough to remember when nothing connoted bigness like the phrase “who do they think they are, General Motors?” – even a term like “general” may have valuable connotations. (Before we write off General Motors’ place as a cultural icon, we should note that they still own almost a thousand trademark registrations in the USA alone.)
The Tesla logo is seen in Washington, DC, on December 20, 2016. / AFP / SAUL LOEB (Photo credit should read SAUL LOEB/AFP/Getty Images)
But if your mark is a combination of a fairly uncommon term like Tesla, plus a common word like motors, people will shorten your name. If it is important to you to be always known by both names, you need to work like heck to consistently market yourself that way and be prepared to have to correct people, even customers. Otherwise, the free market of words will chose your moniker for you.
Tesla is hardly the first to drive down this road. Remember when Apple was Apple Computer? Did dropping “Computer” help it flourish in areas like music players and cell phones? Who can say? There could be something appealing about a company selling phones which is a “computer” company. But from a purely trademark standpoint, Apple’s decision seemed easy, since “computer” did not bring much to the dance.
Who remembers that Starbucks was once Starbucks Coffee, Tea and Spice? Or that Nintendo was preceded in time by the catchy Marufuku Co. Ltd. when it began life in the late 1800’s, then Nintendo Playing Card Company? They changed to Nintendo a couple generations ago. These changes were ultra-long term evolutions.
Note this type of name change is never without risk. Unless your business has recognition created by hundreds of millions or billions in value of combined advertising and free media coverage, dropping any part of your name may not be a winning proposition. If you have established a reputation for a single product, being chained to a name which suggests a more limited product offering does create issues. If you have success with one product under one name, and you want to leverage your name to a different product, will customers know for sure this is the same company they felt they already knew, or does even a small change cause consumers to worry if this is some different “Tesla” company? With Tesla, for the reasons already discussed, there may not be a big risk. But if you are not Tesla, think long and hard, and then long again, about whether there is more benefit to transferring your brand‘s goodwill to another product than tinkering with the name. The value of not only keeping your goodwill going but building on it, by expanding your portfolio, may well (and likely does) far outweigh the “comfort level” of being sure your name does not become misdescriptive of what you do.
Legally, the consequences become striking. What makes a mark strong is a combination of sales and advertising, which leads to consumer awareness. Even better is a mark which can be applied to not just one industry but to several. Then, even if an outsider in a third unrelated industry tries to adopt a mark similar to yours, you have the ability to argue “yes we’re known for SAAS, and yes we’re also known for tax consulting, but our consumers certainly could think the people using our same mark for online ticket selling are us.” Where a name spans more than one field, it is only reasonable that a consumer would think that businesses are related. This not only is logical; it is the way trademark law operates. Building goodwill is a compounding event, like interest. Plus, using the term “reasonable” in the law is always a good idea. It is the ultimate standard, so using the word makes everything you say sound more sophisticated.
Then there is the practical cost. Tesla Motors owns dozens of federal trademark registrations and no doubt has an unmanageable number of other governmental filings. All of these have to be changed. The legal cost associated with a smaller enterprise’s change is proportionally less, but still is a time and money zapper.
There are times when a name change is appropriate. Sometimes your product or service offerings will evolve or even pivot entirely to take away some or much of the appeal of the original name. But it is hard and costly work to nurture trademark rights. Those rights may be your most valuable asset. A new name may be able to springboard off of your original name if you are just dropping or changing one portion. But any change in your mark is creating a weak point that some potential competitor down the road can try to exploit against you. The strongest trademark rights are beneficiaries of progressive and perpetual care and feeding of the same mark. You compromise your rights by veering, even a little bit, into another lane.
This post originally appeared on Forbes.
Cognate now uses blockchain technology to make a record of our users’ trademark
What is Cognate? The Common Law Trademark (CM) Registry - a public, non-governmental
registry and certification system that allows for fast, affordable recordal and
monitoring of trademark rights, including unregistered (“common law”)
trademarks, company names, product names, slogans, and domain names.
But you already knew
How does Cognate use
When users record
their mark, class, date of first use, a specimen of use, etc. on Cognate, a
“smart contract” is created containing this information, and logged in a
blockchain. That means that once this time-stamped “contract” is created, it
may never be altered or tampered with in any way.
What is “the blockchain”?
is a decentralized digital ledger of transactions that combines powerful
cryptography algorithms with a system of decentralized computing power. In
other words, instead of having a single party keep a record of all of the
transactions that happen within a given system, a blockchain shares the task of
recording those transactions amongst the people making them, and the underlying
technology verifies that all users are keeping matching records.
This makes a blockchain ledger, and all transactions
recorded within it, public and immutable. A hacker would have to control more
than half the network’s computing capacity to change any record in the block,
growing exponentially as you go further back in the chain.
Most people have heard of the blockchain in the context of
Bitcoin, but a blockchain has applications that extend far beyond
“cryptocurrency,” and there are other blockchains besides the Bitcoin
Cognate uses the Ethereum blockchain, which allows for the
programming of “smart contracts.”
What is a “smart contract”?
A smart contract is a piece of computer code that can facilitate,
verify, or enforce a contract, transaction or agreement.
How does this affect
The U.S. Patent and Trademark Office was created before the
digital era as a public, centralized repository and verification system for
trademark claims. Cognate uses Ethereum smart contracts to accomplish the same
For each trademark registered on Cognate, a smart contract
is generated containing the registrant’s relevant trademark information
required to prove their use and ownership of the mark.
This creates an immutable, time-stamped record of the
registrant’s rights. Cognate allows for recordal of both federally registered
and unregistered (common law) trademarks, and is an extremely cost- efficient
way to establish a timeline of use for, and claim rights in your trademarks.
Create an immutable record of your trademark rights now.
Next week Bennett Collen
will be speaking at NamesCon 2017
, the largest conference dedicated exclusively to the Domain Name industry and the opportunities around it. He’ll be joined by over 1,500 Domain Name and Internet industry enthusiasts in Las Vegas for four days of intense networking and learning.
Bennett's “Meet the Expert” session is titled Practical Strategies for Disciplined Growth.
He’ll be giving actionable advice on how to get your business off the ground, including how to craft a pitch, gain initial traction, and what tools you can use to supercharge your business capabilities and productivity. The expert session will take place at 11am in the WP Engine Room.
NamesCon is an exciting event that provides unparalleled opportunity for people in the Domain Name space, and the related industries. In the words Frank Schilling, Founder & CEO of Uniregistry:
I’d describe it as a power-event where tens of millions change hands in the corridors, fortunes are made, directions are decided - yet it’s open, affordable…
Yesterday I held a trademark workshop at Venture Café in the
Cambridge Innovation Center (CIC). Many souls braved the frigid temperatures
and high winds to learn about their trademark rights, how to protect them, and some
of the biggest threats faced by trademark owners.
I’ve given this talk three times over the past few months
and I’m always struck by the diversity of the businesses represented in the
audience. Every company – from event planners, to watchmakers, to a company
that helps kids track if they’ve taken their medication (or potty training
progress) using stickers, to nanotech companies, to non-profits that make
sewing kits for the blind – has trademarks.
Trademarks (names, or brands) are the common thread that
connects entrepreneurs across industry and company stage.
“A name will last longer than any other investment you make
in your business. It makes a critical first impression. Even more than your
shoes.” - Alexandra Watkins, professional wordsmith
Thanks to all those who came out despite the weather. If you
didn’t make it out this time, be sure to follow @CognateCM so you don’t miss
the next one!
is founder and CEO of Cognate, the fastest, most affordable way to record and
monitor trademark rights. The son of two trademark attorneys, he earned his
"unofficial JD" in trademark law at the dinner table, and by working
at his parents' firm for parts of twenty years. Follow Bennett on Twitter
What does Mr. Trump’s history of trademark litigation foretell? We’ve made an extensive examination of lawsuits filed, administrative challenges in the Trademark Office, and Trump’s history of trademark registration ownership.
Two of the things about Donald Trump which have become legendary are his love of the “Trump” brand, and his love of litigation. What do his trademark lawsuits and registrations foretell about the course of trademark law in this country for the next four years?
Let’s be honest. With healthcare, immigration, job creation, and nuclear codes among the things that the transition team must fix, trademarks are not exactly part of the first 100 days’ agenda. As important a role as they play in today’s connected economy, trademark policy is something candidates rarely (if ever) discuss. We’re told that Mrs. Clinton was once herself an IP lawyer. But presidents have not traditionally been significant brand owners. Ford Motor Company did not come from Gerald. Vacuum cleaners were not made by Herbert. Taylor wines did not come from Zachary’s family. Obamacare is from Barack…but that’s different.
President-elect Donald Trump addresses supporters during a campaign rally in Cleveland, Ohio on October 22, 2016. (Photo credit JAY LAPRETE/AFP/Getty Images)
If the candidates in an election between a former IP lawyer and a king of brand names don’t talk about trademarks in a campaign, no one ever will. This seems to be the case even the one time there is a significant public policy concern, namely, whether trademark registration may be refused or cancelled when applied to arguably disparaging trademarks, such as “The Slants” or “Redskins.” We’re unlikely to see a role for trademark law issues more prominent in political discourse than that.
Mr. Trump has been a diligent trademark owner. Federal court records show that Donald J. Trump or some Trump company or organization has been involved in a half dozen federal trademark lawsuits over the past ten years. The most recent suit in 2015 technically was a false advertising matter, not a trademark case. His Las Vegas companies filed a case against two labor unions which had circulated a flyer stating that Mr. Trump did not stay at one of his own resorts during an early campaign stop in Nevada, but rather stayed at a competitor’s property — a fact which he denies. The claim was that this allegedly false statement caused reputational injury to the Trump Hotel Las Vegas and constituted false advertising.
The lawsuit characterized Mr. Trump as “…the archetypical businessman – a deal maker without peer. Mr. Trump is a world famous individual, and his name is synonymous with fame, fortune and luxury.” (The court dismissed the case this August, the Trump organization did not attempt to amend its papers, and agreed to the dismissal.)
Before that, the last case showing up under the trademark records in federal court went back to 2008 and involved a dispute over registration of the domain name for “Trump Plaza Of The Palm Beaches” by an independent broker. Pretty routine stuff. In all, there are about seventeen trademark cases over the past twenty five years. None would give the sense Mr. Trump would favor either more robust infringement remedies in court, nor more liberal protections for alleged infringers.
Looking at litigation within the Trademark Office, which typically attempts to block registration to another party based on a claim of confusion, the Trump organization has been a bit more active. But the records do not reflect any activity which appears to be outside the norm of trademark action for the owner of so many marks. This type of trademark protection activity is not unusual for a portfolio of this size. When a mark often consists of a common term, like “trump,” which also has multiple dictionary meanings, conflicts are pretty certain to arise.
The Trump organization owns a lot of marks. I’ve written for several years about the Trump marks and more recently, of course, their political implications. (June 19, 2015 — Bush And Trump: How Big Brands In Politics Work Like Any Other Trademark; February 8, 2016 – Can Trump Trademark Ted Cruz’s ‘Trumpertantrum’?)
In all, there are probably in excess of one hundred current, existing federal registrations to Donald Trump and/or his companies. Sifting through the ownership records might be like what Mr. Trump warned us about those tax returns: it’s complicated. This figure excludes the several marks owned by Melania, and the large and growing stable of “Ivanka Trump” registrations for her products. It also excludes several political slogans, and the large number of marks he formerly controlled in association with the beauty pageant businesses he sold last year, or from an Indiana casino operation which was undertaken over a decade ago.
Among trademark registrations, there is again no indication that Mr. Trump’s company has any unique protection strategy. Clearly, the number of registrations is robust. One could arguably say that the President-elect is more active in the U.S. Patent and Trademark Office than might be necessary, seeking out registration for more uses than perhaps the average well-funded trademark owner. But upon examining the many trademark registrations, there is no pattern which suggests a special view on what or how to register marks.
On the other hand, unlike almost any other president in history, Donald Trump has first-hand familiarity with the concept of marks and brands. He knows the time, money and effort needed for their care and feeding.
As for trade legislation and trademarks? Certain features of NAFTA address trademark rights. If Mr. Trump goes after NAFTA as he has promised, there could be an impact on trademark laws. But the impact likely would be very minor. NAFTA certainly has not created any NAFTA-wide trademark rights. Trademark owners still must file separate applications to register marks here, in Canada, and Mexico. Even an evisceration of the NAFTA deal would not change much. Certain provisions prohibiting registration of “geographically misdescriptive” terms were inserted into our trademark law specifically as part of our membership in NAFTA. This legal issue comes up occasionally, but is hardly front page news. I participated, together with a panel of Canadian colleagues, in a seminar in Montreal in 1994, where we discussed how NAFTA would impact trademark law. The prediction at that time was…not much. There were hopes and thoughts of more trade among the three partner nations, leading to more trademark registration efforts in each country as a by-product of more and freer trade. That came to pass.
We’ve long been a part of at least two other major treaties on Trademark law: the Paris Convention and the Madrid Protocol. Paris has been around for over a century and there is nothing to suggest in any way that this will change. Madrid has been part of our law since 2003. It permits a sort of streamlined style for filing trademark applications in multiple jurisdictions. Multinational trademark owners were heavily in favor. In practice, there is nothing in this treaty that should catch the incoming administration’s attention.
We will have a President who is hyper-sensitive to the value of brand names. Efforts by the courts, legislature or government agencies to lessen those protections will not find a receptive audience in the White House. The incoming President may even argue that his success is built entirely on the fame of his marks. Will that matter?
A version of this article originally appeared on Forbes.
There is a secret to preventing trademark infringement litigation. But on a weekly basis, we see that the secret appears to be hidden in plain sight. It’s a secret which might escape even law school administrators.
One thing is no secret: trademark litigation in the United States is very expensive. But avoiding litigation? Yes, there is a secret to that. It is just like the secret to success in so many things.
Do your homework.
A lot of people, especially in academic or trademark law circles, are fascinated by the trademark dispute between two Texas law schools. On October 14, a federal court granted the University of Houston’s motion for a preliminary injunction, which prevents South Texas College of Law from changing its name to Houston College of Law. Usually, trademark disputes are won on the basis that consumers (here, prospective students) would be likely to be confused. In this case, the court was heavily swayed by its preliminary finding that there would be, if not outright confusion, then at least some initial confusion by students. This is more akin to consumer bait and switch advertising: the consumer comes to Houston College of Law thinking it is the University of Houston. Eventually, they figure it all out, but meanwhile, the confusion is what got them into the “showroom.”
Was South Texas College of Law unaware of the University of Houston and its law school? That would seem on its face to be impossible, and there is no hint in the court’s opinion that South Texas even argued this.
But the judge considered research and facts showing that South Texas knew of certain similarities between the marks and knew that association with a larger major university could burnish its law school’s reputation, based upon the experience of at least one other law school.
Did they do their homework and decide nonetheless that there was no legal problem with their new name?
Did they miscalculate the risk? Or should they have avoided any risk, when weighing the upside to their preferred name with the downside of an adverse reaction?
Should they have tried to pick up the phone and tell the University of Houston of their plans, and seek their blessing? This may sound unreal, but it’s not. Companies – even fierce competitors – are known to often contact each other and talk about how they might be able to peacefully coexist with their trademarks.
Research is critical. Many infringement claims arise because the accused party never even heard of the plaintiff or its company. Conventional trademark research, including a search of registered and unregistered uses, is a mainstream trademark law practice. A good search will reduce the risk of an unknown surprise to a much smaller, more manageable legal risk. Research does not eliminate all risk because searches are still – though using powerful algorithms – a sort of needle in a haystack approach, scouring a huge vat of data to find possible problems. Trademark searches are sometimes under-inclusive. They can also be over-inclusive – including so many potentially similar names that it is difficult to distinguish trademarks used on similar goods and services from old names once used for now-defunct companies, or for products so far afield that they present no real risk of a viable infringement claim.
Everyone should do their homework – even schools. Here, the preliminary decision of this court easily (in my view) could have gone the other way based upon other factors, such as how strong (or more accurately, how weak) a city name like “Houston” could be for use in connection with an academic institution, and whether students really were confused (both sides presented market surveys on this topic – another common and costly part of trademark litigation). The court declined to find express bad intent by South Texas. Unless settled, the case will now head toward a full trial, where any outcome is still possible. Statistically, it is more likely that this case will settle.
Was this a risk South Texas assumed, and did they miscalculate? Or did South Texas not even see this coming? Maybe this law school was prepared for class. Maybe not.
This article originally appeared on Forbes.
Cognate has been named as a finalist for an alt.legal
Innovation Award, by ABOVE THE LAW’s research team and expert judges. Cognate
is one of two finalists in the IP category.
Chris and I will be traveling down to Philadelphia on
Thursday to take part in the alt.legal Innovation Awards Company Showcase,
where influencers of the legal industry, media, and lawyers will hear our
We’ll also be attending the ABOVE THE LAW (ATL) Academy for
Private Practice 2016 on Friday. Looking forward to it!
Everyone knows that words are powerful. Choosing the right words, or sometimes avoiding the wrong ones, are the most important tools in communicating.
So why is it that entrepreneurs spend so much time coming up with the right name for their product or business, or even a whole menu of names for their different services and products, but then leave them all to hang in the breeze, unprotected. Would they leave an unlocked new car parked on the street, with the key inside and engine running?
These are valuable assets, these names. Most of the time, the name is forged out of hours and months of discussions. But after the final naming decision is made, it is on to the next topic – maybe budgeting, expenditures, personnel, or product development. Probably all of those. Only a fragment of startups and new businesses will take some steps to formalize protection of perhaps one of their names (company name, product name, whatever). Otherwise, the name is left to fend for itself.
If this sounds familiar to your business, stop right now – I mean RIGHT NOW – and learn how to protect what might be your most critical assets: your trademarks and business names.
Federal registration can be expensive, complicated and time consuming. But that‘s no reason to ignore it. If you’re like many (far from most) companies, you’ve looked into federally registering your most important mark. But if you have come up with slogans or created clever names for certain services you offer (things like menu items in the restaurant business, for instance), you need to get way more sophisticated about protection schemes.
Learn about common law trademark rights. Learn what you can do to help establish rights in every name you create, not just The Big One. You’ll be surprised to find that you can claim rights in almost every name you create. How well you could enforce your rights against other possible competitors will depend on a host of factors, not least of which might be that you were the first to use the term in your context.
You’re aware, I’m sure at least generally, of situations where someone owning a name or mark was able to prevail against a much larger and wealthier adversary, because they had the law on their side. But how do you maximize your chance to beat that person or company?
Start by taking inventory of every single word and phrase you have created for use in your business. Then try to figure out if the words are the type which you can claim to own exclusively, versus simple descriptive phrases which virtually anyone in your field could be free to use.
Next, ask what you should do to stake a claim. Put a legend on your website which says “XYZ is a trademark of” your company. No formal registration of any kind is needed for you to make this statement. Anyone can lay claim to a mark with the ™ designation. No application is necessary. Put some simple system in place to watch the market for others who could be emulating (read: copying) you. Set up a Google Alert or some other kind of watching. If you’re curious enough, there are low cost businesses out there who specialize in watching trademarks, and even some services (our firm has one) which helps you to document otherwise “unregistered” trademarks. States have their own registration and business name system. Go onto the U.S. Patent and Trademark Office website every once in a while and compare your list of words, slogans and phrases with what other people seem to be using.
No startup or new business wants to be looking for legal conflicts. So, of course, the question arises: what do I do if I see a copier (intentional or unintentional)? If you catch them early enough and send a letter, you may have avoided a huge conflict down the road.
Learn about avoiding words or phrases that are too descriptive unless those terms are, in your opinion, the only possible way to make consumers understand what you do. “Amazon” certainly went for a distinctive name that did not describe what it did. But even we trademark lawyers get it – it costs a lot of money to educate the public about what “Amazon” is, if the company and services are new. Ditto for “Uber” and an almost limitless number of others.
If your startup has an eye on attracting investment, you should be aware that investors are going to want to know you are sophisticated about your intellectual property rights, including all of your brand and product names. Putting a plan into place takes so little time or money. But most companies do not have a plan or procedure. They are so focused (if on anything) with the name registration systems we have had since the 19th century, that they do not open their eyes to the steps they can take to curate (a good description actually, even though it does seem to be the word of the year) their portfolio of names. Most crucially, taking a sophisticated view allows companies to realize they really may own a valuable group of names, not just one.
As some of you may have seen on Twitter, Cognate has been selected to participate in Mass Innovation Nights #90 this Wednesday, September 14.
The top four vote-getters get five minutes to pitch their product at the event. Cognate is currently in position to pitch, but we need your help securing our spot!
Voting takes literally 10 seconds:
That's it. Thanks for your help! If we get to pitch we'll post an update later in the week.
- Go to http://mass.innovationnights.com/events/mass-innovation-nights-90
- Click "VOTE HERE" on the menu on the left side of the page
- Scroll down to Cognate and click "Love it!"
Uber seems to be in the news daily. Today, we hear they are being investigated by Chinese antitrust authorities about their proposed combination with Chinese company DiDi in that nation’s ridesharing market. Other reports tell of an $11.4 million fine imposed by the Pennsylvania Public Utility Commission just reinstated for operating illegally in 2014, which Uber is appealing.
So it is not really news when Uber also finds itself in the thick of a trademark dilemma. In August, Uber acquired the company Ottomotto, LLC, the self-driving truck company. Ottomotto filed an application for trademark registration on March 6, 2016 for “Otto” for cars and trucks that have limited or fully automated driving capabilities. They also sought protection for control units for automating the driving of cars and trucks, comprised of writing software, hardware and sensors, and to protect the service of free transportation and related logistics and SaaS services of providing fully or partially automated trucks.
In this application, Ottomotto claimed to have intent to use the mark, but had not alleged any actual use of “Otto.” The application barreled down the Trademark Office highway fairly unscathed, addressing mostly technical issues about how they worded their products and services. These types of technical issues are commonplace, as anyone who has been through the trademark application process knows. They were also asked to explain whether “Otto” had any particular meaning or significance to the industry, another common question, which they answered in the negative.
Meanwhile, up in Ontario (you had to know there was a meanwhile coming), the company Clearpath Robotics had adopted “Otto” for their autonomous mobile robots and fleets which they hoped to use “for land, air, and water purposes,” autonomous mobile robots, referring to academic, military, mining, agriculture, retail, first responder, and a range of other applications.
Clearpath filed its trademark application in the United States on February 19, 2016. The Trademark Office examined the application and, not unlike the situation with Ottomotto’s application, raised a number of formal issues regarding the manner in which the goods and services were described. The Trademark Office also asked for more information about what exactly those services and goods were. This is not unusual when a trademark application is filed for state-of-the-art technology which may not otherwise be easily understood.
On August 24, 2016, Clearpath filed a lawsuit in the United States District Court for the Northern District of California for infringement of the “Otto” trademark, as well as for unfair competition under federal and state law.
On its face, Clearpath would win the question of “who used first.” When no one is claiming to have used their mark yet, the party which filed its application first will typically have superior rights. Clearpath filed a trademark application 15 days before Ottomotto. Now it gets interesting. Did Ottomotto know of Clearpath’s trademark application prior to the time it filed its own? There is no doubt that the Trademark Office records would have reflected the Clearpath trademark application on the date that Ottomotto filed its own application.
(Disclaimer: how the companies actually found themselves in this situation is all speculation for illustrative purposes. The dates are what they are. The reasons behind those dates are not public at this time.)
Companies typically perform a trademark search prior to filing a trademark application. But in the normal course of events, it is not unusual for a search to be conducted several weeks before an application may finally be filed. Trademark owners need to discuss the findings of a search internally within the business unit, and then with their lawyers. It may well be that such a search was performed before the February 19 date.
So, even if you perform a search, keep in mind that time may be of the essence. The clock is always ticking; there can always be someone filing their own application in the intervening time between when you conducted your search and when you decide to file an application.
It turns out that Clearpath also had filed a trademark application in its home country of Canada on September 18, 2015. (Under an international treaty that governs trademark applications, Clearpath qualifies to consider the September 18, 2015 date their date of first application in the United States, since they filed here in the United States within six months of the Canadian application.) Did Ottomotto learn of the use in Canada before it filed in the USA?
The pleadings in the court case make clear that the plaintiff says it not only filed its trademark application before Ottomoto, but is claiming that it actually used the mark continuously, without interruption, since it first introduced the “Otto” product at the RoboBusiness 2015 conference in San Jose, California. According to Clearpath, Ottomotto is now using its trademarks in the United States in a similar manner, and claims that the press and potential customers have already been confused. They asked the court to stop Ottomotto’s use of this trademark. How Ottomotto is currently using the trademark is not explained the complaint, but they must be, since you cannot ordinarily be sued simply for filing an intent to use trademark application if you do not also have actual use. (Intention to use is not against the law.)
For entrepreneurs, this situation provides a number of things to think about.
First, are you searching trademarks before you use them? If you don’t search, you may unpleasantly discover that someone has prior rights to your own. A worst-case scenario finds you discussing those prior rights before a United States District Court Judge.
Secondly, even if you go through the searching mechanism, you should always keep in mind whether your search results are “fresh.”
On the other hand, trademark rights do not exist in words alone. They exist in words or symbols only as they are used to identify particular products and services. One defense which Ottomotto will undoubtedly raise in this case is that relevant consumers of those two companies are different, and are highly unlikely to (they will argue) be confused. The fact that the complaint says some people already have been confused may or may not be relevant; that will be up to court to decide.
It is highly possible — maybe even likely — Ottomotto and its lawyers knew everything there was to learn about the Clearpath products and decided to move forward because they concluded that there was no legal conflict. These types of decisions are made every day, along with the associated decision to assume the risk — whatever that may be. The proposed mark could be important enough to fight for. The applicant may have confidence that it can win such a fight if it emerges. That calculated risk is one which is much easier to take if you have the financial backing of Uber and can absorb an ongoing stream of six-figure hits for legal fees while you battle it out in the federal courts.
If your enterprise is unable or unwilling to fund this type of dispute then the legal question of whether you believe you can win the fight is less important than the practical question of whether you can afford to find yourself in a fight. You must ask yourself whether any potential new mark is so critical to your company’s success that you are prepared to fight for the right to use a trademark your customers do not yet even know exists. Sometimes, it is better to get away from your lawyers, and go back to the drawing board.
This post originally appeared on Forbes.
Samuel Adams on display at A Dinner, part of the Bank Of America Dinner Series during Food Network & Cooking Channel New York City Wine & Food Festival at Tavern On The Green. (Photo by Ilya S. Savenok/Getty Images for NYCWFF)
It happens every time. There’s a new term the public and the media have fallen in love with. Last month, nothing was bigger than “Brexit.” Then people try to monopolize that term by filing applications in the U.S. Patent and Trademark Office. Someone cries: “They can’t do that!” The response, as in many legal things, is “maybe they can, and maybe they can’t.” Samuel Adams beer is the perpetrator this time. Can they, or can’t they? We’ll get to that below.
Let’s start with the basics. There is no law that says no one can have exclusive rights in a word. But it’s obvious that is not true when you look around at trademarks. Perhaps you’ve heard of “Apple” which is used by a computer company. Can they monopolize use of the word “apple?” Well, if it’s to sell computers and telephones they can. But can Apple claim exclusive rights to use the word “laptop” or the phrase “notebook computer?” No, because those are the words that are used every day by the general population to identify those products. That is different from when you take a word out of the dictionary and apply it fairly arbitrarily to your product, such as “Apple” for a computer. Then, you have a claim for trademark rights. You cannot take the common name for the word out of circulation if it is the name of the product itself, like “notebook computer.”
So with that refresher course on trademarks, what does this have to do with “Brexit?” Well, since “Brexit” is the coined term for British exit, as in “British exit from the European Union,” it would be difficult for anyone to claim exclusive rights to use the word for that purpose. In other words, no one can monopolize rights to the word “Brexit” by racing to the Trademark Office and filing the first application, and thus preventing anyone else from freely using this word.
A man waves both a Union flag and a European flag together on College Green outside The Houses of Parliament in Central London (Photo credit JUSTIN TALLIS/AFP/Getty Images)
Lesson two is that trademark rights do not exist in a word by itself, but in a word as it applies to particular goods or services. Provided that is the key — the use of that word is not trying to monopolize either the actual discussion of Great Britain’s exit, or products and services directed toward exiting the European Union — it is perfectly possible for a company to stake out an exclusive claim to use “Brexit” on its goods.
People in just about every industry have been bombarded with advice from professionals about what “Brexit” means to them. I know that our colleagues in the UK are generating encyclopedias (remember those?) worth of scenarios for how Brexit may affect your trademark law practice and the rights of your trademark clients. If one of my colleagues in England wanted to claim the exclusive right to use “Brexit” as a mark for advising on the impact of Britain’s departure from the European Union, they couldn’t do it.
None of this means that Sam Adams can’t claim rights in “Brexit” for a type of beer. Could you call beer “Escape Hatch” brand beer, or “Nation First” brand beer? Yes. And “Brexit?” If we put aside the separate legal issue of whether consumers would think “Brexit” beer comes from England, the answer is yes again.
One company has sought to register “Brexit” for T-shirts. (Consider the question of whether people really want to buy “Brexit” T-shirts.) If “Brexit” becomes a brand of T-shirt to identify the company selling these goods, “Brexit” can function as a valid trademark. If “Brexit” is just used on a T-shirt as a slogan, it may not really function as a trademark. A trademark tells you the source of the product: a consumer who looks at a T-shirt with a logo that says “Brexit” may view Brexit as some kind of political, satirical or comical statement about Brexit; they are not going to think “Brexit” is a brand of shirt. If that’s the case, Brexit does not become a protectable trademark.
Let’s see who else is trying to protect “Brexit.” There is a company called Quicksilver Scientific located in Colorado which filed an application to register “Brexit” on June 24 for a range of dietary and nutritional supplements. From what I can tell, this just seems like they think “Brexit” can be a clever name for one of their supplements. If that’s all that’s going on, they probably can be the first to claim rights in this term and to register it under the right circumstances.
Then we find the application filed on June 24 (like all the others above) by the Boston Beer Corporation (Samuel Adams) for hard cider. People sometimes get up in arms about this type of trademark filing. But really all a company has to lose is a few hundred dollars for filing an application in the Trademark Office.
This brings me to the next point. What is the benefit of filing an application in the Trademark Office? As many people know, trademark rights begin when you start to use a mark. If you are using “Brexit” already to sell products or services, you start to earn trademark rights, regardless of whether you file in the Trademark Office. What if you haven’t used it yet? The only way in the United States to acquire trademark rights without having use of the trademark is by filing an application with the U.S. Patent and Trademark Office. File a trademark application and you block trademark rights against anyone else who has not yet either: (1) used the mark, or (2) filed an application.
A small minority of observers (ok, bloggers) claim this is a type of profiteering from a very difficult, serious political crisis. They look to analogize the situation to limiting registration for immoral or scandalous words. Courts are struggling with “immoral” and “scandalous” right now. The “Redskins” case questions whether that is a racist term applied to a mascot which is Native American. A band called “The Slants” comprised of Asian band members raises another issue. The Trademark Office has suspended action on any trademark application which is arguably immoral or scandalous until the courts sort this all out. “Brexit” does not fall under this prohibition.
The concept of international divorce may not be a big winner for a lot of products and services. But if it looks like it will work for you, you might be able to jump on the Brexit bandwagon. (Trademark-wise, anyway.)
This post originally appeared on Forbes.
Trademark conflicts are going to happen, and more often than not, they are unintentional. Two businesses can start using similar marks in similar industries, completely independently of each other.
Not only is it not uncommon, it also makes sense: certain words and phrases naturally lend themselves to certain industries (an obvious one is PAY for payment processing – PAYPAL, WEPAY, APPLE PAY, etc.). Other times, conflict is a simple coincidence.
Then of course there are those situations when a competitor admires your trademark a little too much and adopts a similar mark for their own use. They may not copy it exactly, but they come up with a mark that captures the same sound or concept as yours.
If you’re not monitoring federal trademark applications with the U.S. Patent and Trademark Office (USPTO), a competitor may be able to register your trademark, even if you have superior, but unregistered, rights. Then you will most likely have the burden of proving, in court, that you indeed own superior trademark rights – just to regain the right to use your own mark.
Below are the average costs to defend a trademark lawsuit, just for attorneys’ fees, broken down by the amount in controversy.
Source: AIPLA 2013 Report of the Economic Survey @ 2013 IP Insurance Services Corp
These figures don’t include any costs related to associated settlements and/or damages. That’s a lot of money spent by both sides to resolve a conflict that could have been easily avoided.
If you catch a conflict early you have options:
- Contact the other party directly and negotiate a simple solution rather than fight.
- Contact the other party directly and instruct them to cease and desist.
- File a petition for cancelation or oppose a mark in the USPTO.
- If options 1-3 fail, then you can take action in court – or at least let the other party know you’re considering legal action if a solution is not found quickly.
If you’re not aware of a conflict until after the federal application has already been approved, the options for “peaceful” resolution may be off the table.
It’s not just about protecting arguably your most valuable asset: your name. It’s about protecting your business and defending your reputation. It’s about lost sales and lost opportunities. A confusing name can lead your customers to a competitor. If that competitor provides poor service, then your confused customers are going to think that your company is providing the poor service, hurting your reputation.
Catching a trademark conflict early is better for everyone. It will help resolve the issue as quickly possible, result in less money wasted in attorney fees and responses to rejections from the U.S. Trademark Office, help avoid building equity in a brand that can no longer be used, and subsequent rebranding costs (have to change websites, signs, logo, business cards, stationery, which could easily total $100k-$1 million).
There are many companies that offer trademark monitoring services. Cognate’s Trademark Monitoring
algorithm monitors new USPTO trademark applications, and alerts you if someone tries to register your mark, as soon as the data is made available. You can monitor a trademark you’re using, one you plan to use in the future, or even the mark of a competitor.
(March 7, 2016)-
Cognate, a Boston-based legal tech startup, has just announced the launch of
its trademark monitoring service. Cognate’s proprietary algorithm monitors new
federal trademark applications submitted to the U.S. Patent and Trademark
Office. If there is a conflict, Cognate sends an alert notifying the owner of
the Cognate-registered mark that another party is trying to federally register
the mark that they claim to own.
The monitoring service
is coupled with Cognate’s trademark listing service, giving users unprecedented
access to affordable trademark documentation and protection.
“We’re really excited to
add the monitoring service to the Cognate platform. Now, we’re not only giving our
customers the ability to make a public claim of their ownership of their common
law trademark rights, but we’re also helping them actively monitor and protect
those rights,” says Cognate CEO Bennett Collen.
Common law trademark
rights are earned whenever a business uses a name to identify their company, or
a product or service they sell in commerce – no government registration is
required. In some cases, common law rights can be superior to a federally
For more information,
Cognate was created so
that companies do not have to balance protecting their trademark rights with
the cost and time associated with filing a government registration.
Cognate was co-founded
by the father-son team of Jess and Bennett Collen, both Boston College
graduates. Jess is an intellectual property lawyer with 30 years of experience,
while Bennett earned his “unofficial JD” working at his father’s firm since he
was six years old.
For more about Cognate,
To learn more about
Cognate, please contact:
55 Court Street, Suite
Boston, MA 02203
Tel: (914) 944-4631
One question that trademark lawyers hear all the time is “they can’t trademark that, can they?” Take the recent news about the “Trumpertantrum.” Did Donald coin the term? Maybe not. But that does not mean he can’t claim it as his own.
Trademarks are interesting in that way. You can own a trademark because you are the first to use it in connection with a particular product or service. Sometimes clients will see a competitor take a common English language word and try to say no one else can use it on their products. Let’s say you come up with a mouse that looks like a rock. And you call it “The Rock.” There’s a tendency to think, “it looks like a rock, and a rock is a common object. No one can really claim the exclusive right to stop me from using the word ‘Rock’ on a mouse or any other electronic input device.”
Answer: Sure they can. It happens every day. Just think about how a few short decades ago, apples were most famous for their connection with the damnation of mankind. Now the word “Apple” means phones, tablets, laptops, and music. It is easy to understand that no one else can use that word. Because a trademark is not about creating a new name. It is about creating an association between a work (real or made-up) and a product.
It also is not important who created the word. (Who created the word “apple?”) Trademarks protect association. So while the trademark owner is free to create her own word to sell a product, what allows legal protection is not if the word is made up or a dictionary term (that can come into play, but it’s what we trademark lawyers love to call a “factor” and not the whole question). Someone can invent a word, but unless they are using it on a product or service, there is no trademark right.
What does that mean for Donald Trump? It means that even if Ted Cruz made up the word “Trumpertantrum,” Trump can still own the trademark for certain goods or services, as long as he is selling something with that word. Trademark rights cannot be owned in words. They can only be owned for words as used to identify a product or service, or a trait of that product or service.
Donald Trump speaks during a campaign event in Portsmouth, New Hampshire, on Thursday, Feb. 4, 2016. (Photographer: Victor J. Blue/Bloomberg)
There are exceptions, of course. What would the law be without exceptions? Let’s say you want to jump on the “Trumpertantrum” term – which you did not create – to sell boxing gloves. According to the concept of first use – the first to use a name on a product has superior trademark rights – you should be able to legally sell “Trumpertantrum” boxing gloves, even though you did not coin the term. Ted Cruz, who seems to have invented the word, would have little legal basis to stop you, even as the “inventor” of the word. So far, so good. But what if you were Donald Trump and you said: “People seeing my name on these gloves will naturally believe that I make or endorse this product. They will be confused.”
Even if the dispute is in Iowa, Trump wins. Because your right to take a word that you did not invent and apply it as a trademark is only allowed until that use would be likely to cause consumer confusion. Here, because the consumer might reasonably think that Trump owns or endorses any “Trumpertantrum” products or services, he can stop their use.
Think about this like “Obamacare.” Certainly the president didn’t make it up. For a time, it was used derisively by critics of the plan. But, eventually, the president came out and said he actually liked the name, and it has stuck.
What if Ted Cruz says that consumers will believe any Donald Trump product sold under “Trumpertantrum” must be endorsed by Cruz? He’s free to make that argument; if he can prove it, he can win. But Trump has a bit of a head start on trademark use.
In most trademark disputes, you can’t go too wrong by asking yourself, “What do I think consumers would believe?”
This post originally appeared on Forbes.
You know when you walk down the street and you pass a
business with a great name and you think to yourself, “Wow, how did someone
come up with something so clever?”
had this experience when I was walking down Beacon Street in Brookline and
spotted a cozy café called Knight Moves. Why is Knight Moves a clever name for
a café? After all, it has nothing to do with coffee, coffee beans, or even tea!
But Knight Moves isn’t your run of the mill café; it’s a board game café.
Devon Trevelyan, the owner of the
café, understood the importance choosing an attention-grabbing name for his
brand when designing his café, and didn’t come up with the name overnight.
A lot of thought goes into creating
a name like Knight Moves- it’s a triple entendre, and it might take on a
different meaning to each person who encounters it. If you have a background in
music like Trevelyan does, you might automatically start singing Bob Seger’s
song “Night Moves” in your head (or aloud, depending on how confident you are).
If music isn’t your forte, you
might think of a knight performing his valiant duty in the middle ages, which
is the second facet of the “knight” entendre; a knight performing its valiant
duty on the chessboard.
“When I was creating the name I chose
the word ‘knight’ because I am a chess teacher, and chess is one of the many
games you can find in the café,” said Trevelyan.
The third aspect of the triple “knight”
entendre is that the café is open late into the night. Brookline is a family-oriented
neighborhood peppered with college students, recent grads, and those drawn to
the Coolidge Corner Theater and the abundance of restaurants. Trevelyan says “Knight
Moves is about quality, not about quantity. It’s somewhere people can come to spend
time with friends. We aren’t looking for a high turnover rate; we want people
to stay for hours and have a good time.” This isn’t just talk, the café is open
as late as 2AM on weekend nights.
When inventing the name, Devon was
very aware of the implications his name would have on the brand of his café. He
was cognizant of the fact that the name “Knight Moves” might make the business seem
like it’s just a chess shop. But believe me, with about 1,000 board games on
hand at the Cafe, your options are definitely not limited to just chess. With
this concern in mind, Trevelyan designed the Knight Moves logo with dice, a
gear, and some bolts, to portray the variety of games and to give the café an
older, vintage feeling. The antique furniture and the dearth of TVs allow you
to enter a space where you can escape Coolidge Corner, play games with your
friends, and step into a different world, which customers have been doing
happily since Knight Moves first opened its doors in December of 2013.
For those of you keeping score at home,
this would be the date of first use of the Knight Moves trademark. Like most
local businesses, Knight Moves has not registered its name with the United
States Patent and Trademark Office, meaning that Knight Moves is what is called
a common law trademark. Trademark rights
can be locked in place by getting a federal registration, but can also be
earned simply by using a mark, even without federal or state registration.
You can get board games anywhere.
But Knight Moves offers you a space to join a community of people to do
something fun together, even if you’re not a Bob Seger fan.
tuned for more stories featuring local businesses with great names like Knight
Moves. If you also gave a lot of thought to your business name, be sure to
register with Cognate.
This is the third and final post in the trademark protection blog series.
If You’re Not Quite
Ready for All of That…
If the federal process sounds like
too much of an undertaking, and you decide that you want or need to hold off on
making such a big investment of your time and money, you’re not alone. 98% of product
and business names are never
But there is another way to make a
public claim to the trademark rights you own – CognateCM, the common
law trademark (CM) registry. CognateCM is less time consuming, less
expensive, and less confusing than registering with the USPTO. It takes about
eight minutes and costs under $30 per year. Marks listed in the CognateCM
registry gain the right to use CM after their trademark. Even if you
do not register your mark, federally or with CognateCM, you can
always use TM next to it. However, CM denotes both that
it is a common law trademark and that it can be found on the CognateCM
As I mentioned in the first
post in this series, once you begin using your mark to
identify your company, service, or product (read: you begin making sales using
that name), you accrue what are known as “common law” trademark rights. No
government registration is required. So instead of being overwhelmed by the
long and costly process of federal registration, you can make a public claim to
the rights you already own on the CM registry in a few short minutes.
with CognateCM will give you the advantage of documenting your trademark
rights in the public domain and providing public notice of the ownership you
gain by using your mark. Being listed on the CM Registry also helps other
people avoid choosing a mark similar to yours.
If these benefits sound familiar to
you, it’s because they are similar to the benefits provided by registering with
Registering your mark with CognateCM
also helps you get found in trademark searches. Getting found is crucial to
preventing trademark conflicts.
Don’t let my lengthy
explanation of the federal process (or honestly, even how
simple and easy CognateCM sounds in comparison) deter you from
registering with the USPTO! Anyone who has the time and the means should seek
federal registration. But, the two processes do not have to be mutually
exclusive. If you start by registering with CognateCM, you can still
register with the USPTO at any time that you’re ready to tackle the
process. And if you’ve already begun the federal registration process, you can
register with CognateCM while you’re waiting for your federal
application to be processed and approved. You just don’t want to do what most
companies currently do – nothing.
already have a registered trademark for your company or product name, you most
likely have other trademarks or product or service names that you have not
federally registered. It is still a good idea to register on CognateCM
to document ALL of your trademark rights.
As a reminder, this is part two of our three part series on
how to protect your trademark. You can find part one here.
Look out for part three next week!
How Do I Register My Trademark With the USPTO?
your mark with the USPTO you can either hire a trademark attorney to file an
application for you, or you can register it yourself on the USPTO website. The
former option is obviously more expensive and could range from hundreds to
thousands of dollars; however it is often worth the money to ensure accuracy
during the sometimes-confusing registration process.
If you’re still reading this, I
assume it’s because you may not be ready for an attorney yet. Registering your
mark by yourself on the USPTO website costs between $225 and $325 per class (category)
of goods you are registering. The process can be confusing, but I’ll walk you
Step 1: Check to make sure that your mark is not already in use. If you file an application
and it is rejected because someone else registered your mark before you, you do
not get the application fee back.
Step 2: File an application online through the TEAS (Trademark
Electronic Application System). There are three choices of applications; TEAS
Plus, TEAS Reduced Fee, and TEAS Regular, so be sure to fill out the one that
fits best for you. The basic differences between the three forms are as
- TEAS Regular ($325 per class) is the standard
- TEAS RF ($275 per class) has a reduced fee from
the TEAS regular, but must file electronically and authorize email
- TEAS Plus ($225 per class of goods and/or
services in the application) has the lowest filing fee, but you must fill out
almost every field in the form, use the ID
Manual to describe your goods or services, pay all fees for all classes at
the time of the filing, file the application electronically, and authorize
You can read more about the
difference between the three forms here.
Filling out the application for your trademark should take under 90 minutes.
Step 3: An attorney from the USPTO reviews the application. The
review will usually take three to six months, during which time they will often
find a problem with the application. Correcting the problem could be as simple
as amending an address, but could also be as complicated as redefining the
goods and services you originally defined in your application. When this (and
any other) refusal is sorted out, the USPTO will approve your application and
publish it for opposition.
Step 4: Anyone can now oppose your mark for a number of different
reasons. If someone files an Opposition, a proceeding is held before the
Trademark Trial and Appeal Board. Sometimes, this can be as complicated and
costly as court litigation. If there is no opposition filed, or if the filed
opposition is not successful in preventing your registration, the mark is
allowed, and you receive a notice of allowance.
Step 5: Prove use of your mark by sending evidence of your use in
commerce to the USPTO. You have three years to do so, but of course, you have to
pay an extension fee every six months that you fail to provide use. There is a
trademark office fee of $100 per class every six months that you extend.
Step 6: Once you prove use and the USPTO accepts it, they will give
you the registration for your newly registered trademark.
The whole process from start to finish will take from one,
to up to five years to complete. Your registration is valid for yen years, at
which time it can be renewed. However, at the sixth anniversary from the
registration date, you will need to file proof your mark is still being used;
otherwise the trademark office will cancel the registration.
Island Company, a retailer in West Palm Beach, Florida, is
suing PacSun, Kylie and Kendall Jenner for trademark infringement, as reported
Fair. The two sisters, who launched a clothing line for PacSun in 2013,
used a confusingly similar phrase and design to Island Company in their line of
plaintiff began using the phrase, “Quit Your Job/ Buy a Ticket/ Get a Tan/ Fall in Love/ Never Return,” on clothing
in 2005, and filed to federally register the phrase in July 2009. The
registration was completed in March 2010.
sisters created the phrase “Run
Away/Fall in Love/ Never Return,” for their clothing line sometime after
2013, and used a similar style to print the words. PacSun said, “It’s likely to
cause confusion, mistake and deception among consumers, the public and the
trade as to whether defendants’ products or services are affiliated with,
sponsored by or endorsed by plaintiff.”
Jenners have not yet publicly commented on the situation, Island Company has
asked them to immediately cease and desist from using the mark.
Registering a trademark with the
United States Patent and Trademark Office can be a daunting task. In this three
part series, I will explain the importance of registering your mark, how to do
it, and what to do if you don’t have the time or resources for federal
Why Register a Trademark?
In this age of social media, it is
more important than ever to protect your trademark rights. Protect them from
what? Other companies who might come up with a clever name for their business
or product that is similar, if not identical, to yours. You want your mark to be
unique to your product or service in the eyes of your customer. Over time, a
mark that is unique to your product, service, or company will allow your brand
to become more recognizable to the public. Because every company and brand
seems to race to share all thoughts and ideas on social media, it is especially
important to make sure that your marks are protected.
As I recently experienced with the
birth of my first niece, the excitement surrounding a new “birth” (whether it’s
a business, a boat, or a person), leads to endless talk about is what to name “it.”
You probably spent hours, if not days, coming up with possible names for your
business or product before deciding on just
the right one. Registering your trademark can help ensure that all of that hard
work doesn’t go to waste.
Before you decide
on the name for your business, product, or service you should first check the United States Patent and Trademark Office website,
to make sure that no one else has federally registered your ingenious name for a
similar business, service, or product.
Unfortunately, clearing your name
with the USPTO database isn’t enough. You should also do a common law trademark
search before applying to register your own mark. Common law marks are trademarks
that aren’t federally registered, but have accrued rights by simply being used in
business. If an existing mark is similar to the one you want to register, it might
have rights superior to yours, even though it is not registered with the USPTO.
Generally, the first party to use a
mark will have superior rights. Unfortunately, 98% of business and product
names are never federally registered, so comprehensive common law trademark
searches are very expensive, and nearly impossible to do on your own.
By now you are probably thinking,
“if I will gain rights to my mark just by using it, why register with the USPTO?”
There are many reasons:
Look out for part two, How to Register Your Mark, next week!
- Registration gives you the exclusive right to use
your mark in the U.S. in connection with the goods and services you include in
- Your ownership of your registration becomes
- You earn to right to use the registered
trademark symbol “®”.
- The USPTO lists your trademark in their database,
which helps other people to avoid choosing a mark similar to yours.
- If you ever end up in court, you may have an
easier time proving your rights, and in some cases have advantages in getting
damages or (rarely) attorney fees.
- A mark that has been registered with the USPTO
can, after time, benefit from even stronger federal rights.
A couple weeks ago I tweeted a link to this article
run by The Boston Globe
about a trademark battle over the term “Fire Cider” as an herbal drink that remedies a wide array of maladies.
A very brief summary: A company called Shire City Herbals based in Pittsfield, MA filed for and received Federal trademark protection with the U.S. Patent and Trademark Office. Once the herbalist community caught wind of this, there was a firestorm and a “Free Fire Cider” movement began.
The Globe’s article painted a pretty black and white picture about the situation, implying that “fire cider” is a widely recognized generic term and that Shire City has essentially “stolen" it from the herbal community. My first thought after reading the article was to wonder if any of these companies crying foul had earned common law rights that may supersede Shire City’s claim to the mark - hence this tweet:
The next day Amy Huebner, co-founder of Shire City, tweeted at us with links to more information regarding the various claims and disputes that had resulted from the Free Fire Cider backlash. The Free Fire Cider movement had orchestrated boycotts of the product, and in some cases Fire Cider was pulled from shelves. As evidenced by the Globe article, they were successful in getting press coverage for their movement as well.
I reached out to Amy to ask her a few questions. I mainly wanted to know if any companies had come forward claiming prior common law trademark rights for commercial use of Fire Cider (the answer to this was, in short, no). But when we began talking it became obvious that the real story lay in the ignorance of the way trademark law worked in general - not just common law rights like we’re used to seeing at Cognate.
In the Globe article, one of the herbalists currently involved in a suit with Shire City and a leader of the Free Fire Cider movement was quoted as saying “We are not lawyers. We are herbalists. So we are very confused. How can this happen?"
This much is evident, and I think both sides would have been better served had the herbalists taken the time to fully understand what was happening before engaging in a takedown campaign. Fire Cider had already been Federally registered by Shire City, and several of the lawsuits only arose after the Free Fire Cider movement gained widespread exposure.
Huebner said the initial problems started from a miscommunication. “When we first noticed people using our trademark on Etsy, we were advised by our lawyer to use Etsy’s standard procedure for trademark infringement but that resulted in some herbalists having their [Etsy] stores completely shutdown, which we didn’t realize would happen.”
It seems like this is where most of the confusion bgan. A couple of small vendors got shutdown due to a legal claim for a name they thought was generic, and probably assumed they were under attack by a big corporation. Confused and angry they appealed to the healing community at large, and without fully understanding the situation they rallied around the cause.
Once Shire City realized what was happening to the vendors they tabbed through Etsy’s infringement system, they started reaching out to vendors on an individual basis to ask them to stop using their mark instead of using official channels.
“We’ve had a lot more success that way,” said Huebner. "Some people change their name and still hate us, but a lot of people understand once we explain it to them. We’ve even offered to help cover the cost of printing new labels for vendors who have to change their names."
Huebner also reiterated that they have no intention to stop people from using similar recipes.
In the end, Shire City’s intentions and the wishes of the herbalist community are moot, and this will come down to whether or not the USPTO finds “fire cider” to be a common or even generic term for these types of products. In the meantime Shire City is legally obligated to police their trademark, or risk losing it altogether.
for more stories like this one.Bennett is not a lawyer, nothing in this blog should be construed as a legal opinion.
“Again and Again and Again and Again.” Those are the words of the day in Republican presidential politics. Again the candidate is named Bush. Again the candidate is named Trump. Again a famous political name and legacy is asking for votes. Again, a household name, famous for other reasons, hopes that the brand power can transfer from the two R’s – Real Estate and Reality TV – into voter confidence.
Brand names have a long history in politics. Bush gives us one of the more nuanced family legacy candidacies in the history of American presidential politics. His family name is so entrenched in American government that speculation about his presidential ambitions has been discussed openly for over a decade. Jeb Bush’s own mother, Barbara, once was quoted as saying she thought the country had seen just about as much of the Bushes as they could take, and she did not think Jeb should run. Being a candidate who is both brother and son to United States Presidents is unprecedented.
How does all that political history impact the Bush brand? The same way a long history works with products. If Oreo wants to come up with a brand extension, it asks: how powerful is the trademark? Can we extend goodwill from one product to another? Will the “Bush” mark transition well into another presidential candidate? Not even Hillary herself has to deal with as much name brand baggage as Jeb Bush. While she seems focused on riding back to 1600 Pennsylvania Avenue on the “Bill and Hill” wave, Jeb’s announcement identified arguably his greatest asset and said, “Don’t judge me by my name.”
Is the Bush brand already old news? Brands have a sort of “use it or lose it” element to them, whether in politics or on products. Too long a lapse between uses and the value of the name will disintegrate. But the next generation politician can still reap benefits even if there has been a gap of years since the last family member was in office. There is an interesting phenomenon with product brands. Legally, rights in a trademark are gone once the goodwill the name signifies to the purchasing public is gone. The goodwill sometimes dissipates in just a few years. But, sometimes, old brands will be revived after a decade or more because of the emotional ties that consumers feel for the name.
Would a product ever say “Don’t judge Oreo chocolate bars on what you know about Oreo cookies?” Yeah, I don’t think so. What is the point of leveraging the brand if you are going to distance yourself from it? In trademark infringement cases, use of a powerful brand in conjunction with a line extension or co-branding is always powerful evidence that consumers will not be confused as to the source of the product. The argument is that the powerful brand names provide unambiguous differentiation (as long as that name is in fact a true brand and not a generic term). Such is the concept of goodwill in trademark law. So, is Jeb Bush really turning that principle on its head by saying he feels no entitlement as a result of “… party, seniority, family, or family narrative. It’s nobody’s turn.” In a word, no.
He is recognizing his brand, and doing nothing to retreat from all that brand power brings to him. He is simply saying that he is the new product and stands on his own two feet. Name alone usually cannot create success, either in politics, or the commercial marketplace, but experience enhances product quality. For heirs to a political heritage, a lifetime of exposure to the people and instruments of power can create the type of know how needed to extend a political brand from one generation to another.
Don’t buy Milka chocolate bars with Oreo because you love Oreo. Buy it because it’s a great new product; just don’t forget about the strong trademarks and what they mean to you. Remember when Andrew Card, George W. Bush’s Chief of Staff, said Jeb would be a stronger candidate without the “Bush” brand? Andrew said that if Jeb ran under “John Ellis” (his given and middle names) he could sidestep all the baggage of the Bush name, and perhaps of any anti-dynasty bias. Jeb was much more clever than that. He didn’t disclaim the importance of the Bush brand. He just said to like the product for all it represents.
Donald Trump, on the other hand, is the brand personified. He made his announcement from a building branded Trump Tower. Even in the wake of the 2012 election, where “the 1%” became a catchphrase, Trump defined his brand as this: “I’m really rich.” He threatened to run for president at least twice before, thus imbuing his brand, by now, with at least some semblance of political color. His brand may not be loved, but it gets him attention; skeptics are writing today that all he wants is more brand-building attention, and that as much as he would love to be president, that is not what his campaign is about. It is about burnishing his “Trump” trademark for his next round of commercial ventures.
Celebrities have sometimes surprised the experts. The national media looked at Jesse Ventura’s candidacy as a joke when he ran for governor of the State of Minnesota in 1998. But when he won the election, he won a lot of fans in the process. The image of a Navy SEAL may play well in any political race. The image of a pro wrestler? Probably not so much.
Political dynasties have always been with us. Going back in time, over 100 families have had at least three members serve in the U.S. Congress. On the other hand, where there is no family name recognition, money can buy and grow brand names for products. Those with huge personal fortunes to invest, like Michael Bloomberg, can succeed. (Still, Bloomberg left office with a significant following and often high praise for his performance.) Other millionaires and billionaires, from Ross Perot to Steve Forbes, have mounted presidential campaigns. Perot was able to mount a spectacular third party candidacy that drew him millions of votes, and may well have tipped the balance in the election of Bill Clinton.
Both political family names and celebrity names strongly parallel trademarks for products. Those things that courts have recognized in protecting product names are the same traits that make name recognition so valuable to a politician. At the presidential level, a strong trademark must symbolize strong product traits. In trademark law, cases are often won when even surnames can become strong marks if they have acquired “secondary meaning,” which is a way of saying that otherwise common names, when put in the context of a product, have come to mean the product. Think Disney.
Name recognition alone may cause local voters to pull a lever, but in the race for the White House, the winning brand needs more than name recognition alone. The political name still must represent a product that people want to buy. This post originally appeared on Forbes.
The media is calling it a “nostalgia craze.” A trademark lawyer could call it residual goodwill. KFC and the Colonel. McDonald’s and the Hamburglar. Meanwhile, reports this week have Shake Shack looking at a chicken brand. Every marketing change carries risks. How about legally? Is there any risk in going back to the future?
Companies regularly move away from one mark and marketing campaign to a new one. It goes like this: Company A used the mark for 14 years. A long time. They spend millions in advertising and promotion. But time moves on and competition never stands still. Time for a fresh approach. Suppose that five years after Company A closes, Company B comes up with its own idea. Company B has no desire to copy Company A. But the new name it wants to use is really close. Company B will wonder: “Can we use this name?”
The law says you can presume that after a three year lapse in use, the first user has abandoned its rights. But that presumption is easy to beat, so it usually does not get you too far when Company A’s mark is known nationwide. The legal analysis is usually very murky. The question is: “When does the public stop associating this mark with Company A?”
The Hamburglar does not seem to have been the subject of numerous trademark registrations. One of them, for restaurant services, expires in June, subject to renewal. For McDonalds, the Hamburglar was probably a supporting cast member at best. Is the Hamburglar appealing to today’s little kids, or to their parents? Considering that most little kids don’t walk into McDonalds with cash or debit cards, it is probably fair to conclude that the purchasers are parents. If the parents remember the Hamburglar, then rights in the trademark haven’t lapsed. This is a bit of an oversimplification, but generally, this is how it works. And again, this is not a perfect example because — whether or not still used — “Hamburglar” is still registered to McDonalds.
With The Colonel it is probably the same conclusion, but a slightly different story. Once upon a time, when KFC was known as Kentucky Fried Chicken, it was all about Colonel Sanders. The Colonel was everywhere — on every bucket of chicken, on every sign, on every napkin and in every commercial. Then, The Colonel was demoted. Trademarks like “Colonel Sanders Recipe” went by the wayside, and even the drawing of The Colonel himself let there be no doubt, the Trademark Office records say: “The mark is a representation of an actual person, namely, Harland Sanders, whose consent is of record.”
Bringing back a mark which the media today is calling “nostalgic” has its risks, but a mark in which there has been great investment does not easily go away. Leveraging a brand has great value.
Now, turn away from icons of the past to possible fast food empires of the future. One of the hottest names in fast food this year has been Shake Shack. Having a foothold in burgers and shakes, they seem to be trying to leverage their “Shack” mark to expand to things like “Chicken Shack.” The media is reporting that “Chicken Shack” is the subject of a new trademark application because they want to expand into chicken restaurants. (The application is for chicken sandwiches, not restaurants, but what do I know?) Some media reports also say that there seem to be lots of “chicken shacks” around. But, again, it may be worth the risk to SSE, the company which owns the Shake Shack intellectual property, because of the huge investment and cachet that is “Shake Shack” this year.
Building on a tried and true, or even historically iconic brand, holds great promise. But it is not without risk.This post originally appeared on Forbes
LOUISVILLE, KY – APRIL 30: Stanford goes over the track during morning training for the Kentucky Derby at Churchill Downs on April 30, 2015 in Louisville, Kentucky. (Photo by Rob Carr/Getty Images)
Each May (since back in 2014), we have looked for the winner in the Run for the Roses, based upon the name of each thoroughbred. Last year’s surprising super-horse was California Chrome; the prediction here was: “This is a 1965 muscle car from GM, is it not? It’s not necessarily the best driver on the road and it may not be the absolutely most reliable way to get from A to B, but it can run.” Chrome almost ran itself into a Triple Crown.
Here, in order of gate position, are this year’s horses:
Ocho Ocho Ocho. Under the eight-ball three times. This does not feel at all lucky to me. No mas.
Carpe Diem. A forceful message. All of these horses want to seize the day. I will want to consider one who’s been bred for that purpose. To some, Carpe will sound a bit fishy, which is a turnoff in a racehorse.
Materiality. As a lawyer I should love this one, since materiality is always an important touchstone for identifying relevant evidence. But do we want to pick a horse whose best claim to win a race might come on technicalities that disqualify every other horse?
Tencendur. We can all agree, this horse sounds too calm to beat out nineteen other world class animals. Maybe he is a good choice for leading the pre-race prayer in the paddock.
Danzig Moon. What’s with “Danz?” (Last year, we had Danza.) A name which suggests this horse is going to drop harness to flash his hindquarters might make him a favorite guest at Animal House, but I’m sorry, to me, the name does not connote “Champion.”
Mubtaahij (call him: MOOB-tah-heege). What are we American consumers to do with a foreign sounding name, especially an unfamiliar one. It became hard to dissect connotations other than the most broad-based ethnic ones. It’s an Arabic name. (Reportedly, it means either “cheery” or “elated.”) Only a small percentage of the population will get those meanings. To the rest of us, a horse named “Moo” seems to be a confusing choice for the winner’s circle.
LOUISVILLE, KY – APRIL 30: Mubtaahij goes over the track during morning training for the Kentucky Derby at Churchill Downs on April 30, 2015 in Louisville, Kentucky. (Photo by Chris Graythen/Getty Images)
El Kabeir. Surely this is not the alter-ego of El Kabong, which itself was the alter-ego of the cartoon horse Quickdraw McGraw? I don’t know why, but this name seems to resonate.
Dortmund. The only Dortmund I know is a large German city. I don’t know if this is in the lederhosen part of the country, but I can just see this horse taking a jaunty walk in the woods.
Bolo. This name has so many meanings. It is slang for a screw up, for “be on the lookout,” for a type of knife, or a necktie. This horse will be a slow starter, but work his way up along the rail. The rest of the field must be on the lookout.
Firing Line. A fine name for a racehorse. Naturally, very quick out of the gate from the number ten position.
Stanford. We’re talking an academic and athletic powerhouse. A top 20 pick in football and women’s basketball, as well as men’s basketball NIT champs (ok, ok). Why not the Derby, too?
International Star. This creates rather vague imagery. If this refers to the horse itself, this name is too boastful to put in the work to be a champ.
Itsaknockout. This would be another tough contender. Win by a knockout, and it is lights out for the rest of the field. Plus, this name may mean it’s a nice looking horse, too.
Keen Ice. I’m trying to say this name fast (keenice?) to see what else it could mean. Ice in the veins is always good in a competitor. Not a bad name. Let’s say I’m lukewarm about Keen Ice.
Frosted. First cousin to Keen Ice? Neutral on the connotation scale. Or maybe a horse with some gray hair? If this horse is frosted by the competition, that would not be good.
War Story. Everyone loves a good one. Plus, there are Man o’ War, and War Admiral. This sounds like a good old-fashioned racehorse name if ever there was one.
Mr. Z. I have it on good authority that Mr. Z does the mane and tail styling of the other nineteen horses. I’m just saying.
American Pharoah. Royalty is another popular naming theme, and this guy has the advantage of being a favorite. It’s a tough name to beat.
Upstart. This has to be a longshot. The big risk takers will put their money down heavily on this entry.
Far Right. Finally, a horse the Tea Party can call its own. At Churchill Downs, the horse coming up along the far right can win the race if he’s ready to run longer and farther than everyone else. If everything falls into place, and the rest of the field is bunched in the middle or, heaven forbid, on the left, then Far Right might be able to pull it off.
How do my theories pan out? Besides my boast on California Chrome (above), my theory spit the bit completely on last year’s #2 horse, Commanding Curve (“you don’t picture it being a complete wire to wire racehorse”). Win some, lose some.
This article originally appeared on Forbes
Lots of publicity has come to DirecTV for its annoying, bizarre, hilarious or highly effective (you choose) television ads. Rob Lowe and his evil twins, alternating between those super-creepy, painfully awkward, or far less attractive versions of the actor, touted the benefits of cool DirecTV, compared with what the ads portray as awkward or creepy cable. Nothing unlawful about that.
Probably most of us took for granted DirecTV’s claims that its service delivers better picture and sound quality than cable, more sports programming than its rivals, and shorter customer service wait times than cable operators. It also said it was rated No. 1 in customer satisfaction. It turns out these claims could not be substantiated. Who knew? Well, Comcast, among others.
A charge was filed by Comcast against DirecTV at the National Advertising Division of the Better Business Bureau (known as the NAD), claiming that the ads, and particularly the outrageous alter-ego characters, were so “outlandish and exaggerated” that consumers would not expect them to be literally true. The NAD said it was not against humor, but disagreed that context in these ads made clear that the claims were not intended to be taken seriously.
Comcast did not like being lumped into the “loser” cable image. It could have run to the federal courthouse with hair-on-fire urgency. Why did it opt for the NAD? While many companies want to sue first and ask questions later, many significant advertising claims are decided on a voluntary basis – a non-binding voluntary basis. Both sides make their claims and submit their evidence in the form of ad substantiation. Some advertising experts are left to decide. This is not like calling the BBB at their the toll free number to complain about a dry cleaner losing your shirts (again). This is a corporate process. The filing fee can be from $10,000 to $25,000 dollars. (A federal lawsuit is a bargain to file at $400.) But legal fees connected with a lawsuit will be expensive for taking a claim like this to trial in federal court (it can easily be a seven-figure expedition through the judicial process). The legal fees to prepare and file an action in the NAD are greatly limited and vastly less costly than court.
The NAD also supplies the major benefit of getting to a decision in a few months. Even then, an ad could have run its course by the time a decision is made. In a court action, you can be pretty sure the offending ad is a moot point by the time a trial is scheduled 24 months down the road. DirecTV says that it was going to drop its ad campaign anyway – it had moved on to a new campaign.
If a company disagrees with the NAD, it is not compelled to drop its ad. The NAD has no power to fine the parties and its process does not require them to promise to be bound by their decision. As a practical matter, companies are reluctant to go to federal court and defend an ad that the experts at the NAD have found to be unsubstantiated.
It is a bit hard to imagine that DirecTV had already exhausted this campaign, given the time and money invested in running and producing these ads, with a high-profile celebrity. It says it does not accept the decision of the NAD and is going to appeal to the National Advertising Review Board.
Aaron Burr is often quoted as having said that the law is that which is boldly asserted and plausibly argued. There’s a lot to that. But truth in advertising must be more than boldly asserted if it’s going to get past the NAD. Maybe if DirecTV really does pursue this further, it can make a convincing claim that its ads were not inaccurate. But once you agree to participate in a voluntary process like this one, you have to more or less be willing to abide its decision, and based upon DirecTV’s statement that it was done with the Rob Lowe advertisements, you have to believe they went into this NAD process with their eyes open. If the parties were in federal court, no one would be talking about this for months or even years to come. In fact, eventually it would have been a moot point and the parties would have settled quietly because the campaign would have outlived its usefulness.
Sometimes, if an ad campaign is so threatening, the only apparent remedy is to go to court and seek an immediate injunction.
These kinds of false adverting claims can be difficult to define exactly, but they are of great interest to consumers – in part because consumers are well-informed spectators in the dispute. Because of the visibility which comes from the clearly enormous advertising budget dedicated to this campaign, the NAD itself, and its role in resolving claims, has gotten some publicity here too.
(March 29, 2015)-
Boston-based startup Cognate has launched a first-of-its kind platform that
enables companies to record a claim to each of their product or service names.
The launch of this service comes just six months after Cognate introduced their
Business Name trademark-listing platform, creating a more complete trademark
Well over 95% of
all business, product, and service names are never registered with the U.S.
Patent and Trademark Office (USPTO). Product and style names in particular are
often neglected due to short product cycles and the sheer volume of those names
that are generated. Under these circumstances, registration of each name with
the USPTO can become prohibitively expensive for even the largest companies,
and has little relative payoff.
Companies now have
a viable alternative to federal registration for making an explicit public
claim to any name they use in doing business, no matter how many names they
generate, or for how long they are used. Says co-founder Jess Collen, “Businesses create a world of names
and marks every year – including style names within a
product line, like model names for skis, or a new
season’s line of lip color. Most of them are never put through the trademark registration process. But technology now allows a better way for rights to get
noticed, and Cognate is the first place to make this available to everyone who
creates a new name for a product or business.”
information, visit https://cognate.com/
Cognate was created
so that companies – specifically startups and small businesses – do not
have to balance claiming their trademark rights with the cost and time
associated with filing a government registration.
co-founded by the father-son team of Jess and Bennett Collen, both Boston
College graduates. Jess is an intellectual property lawyer with over 28 years
of experience, while Bennett is the CEO and took the company from concept to
the product that exists today.
For more about
Cognate, visit https://cognate.com/about
To learn more about
Cognate, please contact
41 Winter Street,
Boston, MA 02108
Tel: (914) 944-4631
Louisville Slugger Museum, Louisville, KY (Photo Credit: Peter Fitzgerald)
Soon Finnish people will understand what Carrie Underwood means when she sings “I took a ‘Louisville Slugger’ to both headlights.” With a brand iconic enough to be a hit lyric of the country music variety, “Louisville Slugger” may know a thing or two about owning a trademark which has, as we say in the trade, “acquired distinctiveness.” Lots of place-names end up in trademarks. But it is sometimes a slow road before a geographic name like Louisville can become a hit. A name like “Louisville Slugger” can double as both place and product name. A product named after a place may run afoul of trademark law.
The general concept is simple. Any name that describes a feature, characteristic or trait of the product is suspect. It is considered “descriptive.” A descriptive term of that type cannot be owned by any single company until and unless the company has shown that the product is what people think of when they hear the name of a particular brand or product.
If an artificial sugar has the name “sweet” in it, like “Sweet and Snappy,” the mark’s owner cannot stop others from using “sweet” unless consumers associate this not with a description of the product, but recognize it as a brand name. It would not be fair to competition to allow someone to take a word out of the dictionary and exclude all others from using an actual dictionary term that applied to the product. If you can turn a word double-play and associate the name with the product (without regard to meaning) you can use it.
This leads to one of the great misconceptions of trademark law. You can earn rights in descriptive words if you have used and advertised them enough. I can own exclusive rights to use “Fork” for a mechanical pencil even though I can’t stop others from using it for forks. (No one can ever own the generic name for the product itself, like “Fork” for forks. But “Fork” for pencils, computers, or computer consulting services — go for it!)
The same principle applies to a name that reflects the geographic source of the product. It is not fair to say no one can own rights in a mark which may not describe the product, but describes where it comes from. Would “Louisville Slugger” be the only company in Louisville which could make bats? No. Any competitor could step to the plate. But once the name Louisville is associated with the product, then no one needs to be hit over the head to see the value in allowing protection as a trademark.
The principle applies to surnames as well. Like “Wilson,” as in Wilson Sporting Goods Co., which is the new parent/affiliate of Louisville Slugger. If you’re named Wilson and want to sell sporting goods, that is OK, unless some other Wilson not only got there first, but has then also established rights in the name so that when a consumer heard “Wilson” in connection with sporting goods, they would associate it with a specific company. Both “Wilson” and “Louisville” will now be owned by the Finnish company, Amer Sports Oyj (which also owns other brands, such as ski makers “Solomon,” “Atomic”).
Reports indicate that bats will still be made in Louisville, though the company apparently also manufactures in California and elsewhere. This means that even if there were a transfer of manufacturing to Finland (nowhere in the announced plans), they could use the mark, because where a trademark is already well known in the USA to signify a brand of bat, not a geographic origin, it is safe to keep using.
There have been instances (I was involved in one) where a state government did not take kindly to plans to move production out of state, and sued to say that the name, if applied to goods made elsewhere, would deceive consumers. This type of challenge is rare and would not be easy. (As a footnote, the trademark laws were changed in 1993 to prevent “misdescriptive geographic marks” from ever being registered with the United States Patent and Trademark Office. A mark like “Louisville Slugger” was grandfathered in. But if “Louisville Slugger” were made somewhere else, whether in Finland or Florida, there might have been a problem.
While clever lawyers can always make these kinds of arguments, at the end of the day, it seems that even a Finnish company will be safe owning rights to use the name “Louisville” to the sell all-American baseball bat.
This post originally appeared on Forbes
You’ve probably heard about the New York food distributor called Early Bird Foods, which sells “Haulin’ Oats” brand cereal. Hall & Oates wants them to stop. Naming food after celebrities is not news. It’s old. What about the “Mel Brooks” (pastrami, turkey and Swiss) or “Larry David” (corned beef, turkey, pastrami and Swiss) sandwiches at the late, great Stage Deli in New York? Having food named after you was almost like getting your star on the Walk of Fame in Hollywood. If it works for pastrami, doesn’t the same thing apply to granola?
The answer is: maybe yes, maybe no. When you ordered a sandwich at the Stage, did you understand that the name represents a favorite concoction of that star? Probably. Did you think that the celebrity vouched for the quality or supervised its preparation? I’m going to guess no.
Do you think Hall & Oates has gone into the food business? Might you think that, like “Newman’s Own,” they have let someone use their name for a product they like and endorse? If your answer to this is “yes,” you can step into the self-checkout lane marked “infringement.”
If you think that this is more of a play on words or satire, then you will want to check out the “parody,” or “fair use,” lane. You are not confused, you don’t believe this use influences your view of the duo touted as the best-selling musical duo of all time (you could look it up), you don’t find this to make its trademark any less valuable on the products if it wishes to use its mark on other products, and just generally, you “get it.” Haulin’ Oats. Hall & Oates. Very funny.
Did Babe Ruth mind when the “Baby Ruth” candy bar came out? You bet he did. The candy’s maker, Curtiss Candy, insists to this day (well, now Nestlé insists) that the bar had nothing to do with the Sultan of Swat, but was named after President Grover Cleveland’s daughter Ruth, who died at an early age. Of course, the bar made its debut in 1921, just when the Babe was taking over baseball by storm, and a dozen years after little Ruth Cleveland had passed away. Who was this product named after? It didn’t seem like a hard call to make. But, in fact, once someone wanted to put out a bar endorsed by Babe Ruth himself, it was too late. Curtiss was already there. A mere 70 years later, the candy maker and Babe Ruth’s heirs finally came to a licensing deal, and ten years after that there was a short time when the “Baby Ruth” was the official candy bar of Major League Baseball.
In the tradition of the “Baby Ruth,” Reggie Jackson, never shy, endorsed the “Reggie Bar,” which was not a significant commercial success. Then there was the “Arnold Palmer” (iced tea and lemonade) named after the legendary golfer, and the “Shirley Temple,” named after, well, you know.
Would you believe that Whole Oats Enterprises (owned by Daryl Hall and John Oates) actually owns a federal trademark registration for “Haulin’ Oats” for oatmeal? They just purchased rights early this year from another individual using this mark since 2012. Just as Curtiss could block the Bambino himself from selling a “Babe Ruth” candy bar, Hall & Oates were actually beat to the punch in using what it claimed to be its own name. They had to try to re-claim rights in the name from some other prior user of “Haulin’ Oats” before they could attack Early Bird. A certain Ms. Levine had registered “Haulin’ Oats” with the Trademark Office. Eventually her company worked out a deal with Hall & Oates and sold their trademark rights to the brand. (Rumor is, by the way, that they probably bought it for a song.) But without that deal, maybe Early Bird could have prevailed.
If Early Bird had used the mark since before 2012, then they may have arguments in their favor. If the people who sold the trademark to Hall & Oates never really used this very significantly at all, that would be another weight on Early Bird’s scale.
Otherwise, the question simply comes down to use of identical marks on oatmeal versus granola, which all of a sudden is not such an interesting trademark dispute at all.
This post originally appeared on Forbes
This post originally appeared on the IndexCardCure blog.
It used to be that when the average American heard the word “Brand” or “Trademark” she would think of CocaCola® or Dove® soap. But now, many people have Brands of their own.
You don’t think you have a Brand? Well, you actually might. When you get right down to it, a BLOG name functions just like any other Trademark; a distinct name, chosen carefully, like IndexCardCure™, which indicates the source of a certain quality of a product. A Brand or a Trademark is any word, group of words, design or logo that indicates the source of goods or services.
Everyone who ever has the opportunity to name something (or someone!) usually puts a lot of thought into the choice. My collaborator Joan Grey and I certainly did when we endeavored to name our Blog and articulate the mission of our enterprise. And since I know a thing or two about Trademarks, we took steps to search to see if anyone else was using this Brand before we adopted it. Now we are using our Trademark and trying to establish that quality writing, solutions to everyday issues, and guidelines for making happy and successful life choices will be the products and services we deliver under our Brand IndexCardCure.
Since I am a chronic multi-tasker, soon after I started collaborating with Joan on the IndexCardCure™ solution system, with a goal of helping articulate guidelines to lead a simplified and satisfying life, I wound up on the board of a start-up company that had another goal that resonated with me. The company is Cognate™, a startup with a mission to make the process of claiming rights in Brands more accessible.
And today I brought the two together by recording my Brand IndexCardCure on the Cognate website, http://www.cognate.com.
The Cognate™ website makes information concerning Brands and how to establish rights in brands easy to understand and simple to do. It also provides a place to record your use of your Brand.
So in keeping with our IndexCardCure™ mission of distilling complex issues our readers might face in their lives into manageable guidelines, for all of us in business trying to catch a share of the market with a clever Brand, I recommend checking out the Cognate™ website for name protection solutions.
© Jane F. Collen March 5, 2015
JCPenney is up and down these days. Sales, including same-store sales, were up. But profits, and the stock price (by almost 10%), are down. And then there’s their latest loss in the courtroom.
Yesterday, an Appellate Division here in New York found that Macy’s should be allowed to pursue its claims for misuse of confidential information and unfairly competing with Macy’s, arising out of JCP’s sale of Martha Stewart products. The court also confirmed that a lower court ruled properly on a separate count of tortious interference.
In a nutshell: JCPenney and Martha Stewart tried to formulate a way around Martha Stewart’s exclusivity with Macy’s. They created a store-within-store concept, whereby Martha Stewart products would be sold at the store-within-store at JCPenney. They hope to sidestep contractual restrictions that prohibit Martha Stewart products being sold by other retailers outside of its exclusive deal with Macy’s.
The case gives an interesting look at general unfair competition and use of confidential information between parties. Confidentiality provisions are exchanged every day. Companies often realize that they are still assuming a risk even when they restrict confidentially under agreement. People are people, and documents (sometimes intentionally, sometimes inadvertently) find a way into hands which should not have them. Other times that information is virtually jack-hammered out of one party by another. As this case shows us, you need to, at minimum, take certain steps to protect how far confidential information gets circulated.
This is also the somewhat rare case that defines unfair competition, usually limited to specific types of acts, more in broad terms of right or wrong. As is often the case, the facts the court discusses are extreme, and the resulting interpretation of what exactly is “unfair competition” also ends up being pretty extreme.
How could a large, experienced and sophisticated company like Martha Stewart Living Omnimedia be fraudulently “induced” to do something it should not? According to yesterday’s opinion, it was Martha Stewart, seeking to raise revenue, which approached JCPenney about finding a way around Stewart’s exclusive arrangement with Macy’s to sell hundreds of home goods items branded with the Martha Stewart marks. Yesterday’s opinion says that without JCPenney’s activities, the breach would not have happened. (This is what the lower court had found as well.) The decision said that JCPenney also, as a condition of its contract with Martha Stewart, demanded the company to disclose confidential details of its Macy’s contract. This confidential information was then circulated somewhat freely among JCPenney executives. The court implied but did not say that perhaps a more restrictive use of the confidential information may have protected JCPenney against this type of claim. According to this opinion, JCPenney was relentless in demanding that Martha Stewart disclose facts from its Macy’s deal.
The court also said that JCPenny was fully aware of Macy’s “commercial advantage as the exclusive distributor of these branded products…[and] its actions in attempting to misappropriate this commercial advantage by inducing Martha Stewart” to breach the agreement falls squarely within the definition of unfair competition. JCPenney “exceeded the minimum level of ethical behavior in the marketplace” and used Macy’s confidential competitive information obtained from Martha Stewart, resulting in a misappropriation of Macy’s “labor, skill, expenditures, and goodwill,” all the while demonstrating bad faith.
If nothing else, this part of the decision shows that courts can be relied upon to properly apply business principles between business entities and may help to dispel the unfortunate image that litigation always has for outrageous verdicts based on policy decisions that don’t appear in the law. I doubt JCPenney is sitting around this morning feeling vindicated on that basis however.
So outside the context of JCPenney and Macy’s and the fact that this case now can go back for further trial on those two additional issues, what are the lessons?
1. It can in fact become your problem if you are negotiating with a company which is under exclusive agreement with someone else, and devise a plan to circumvent that contract. Both parties can be at risk.
2. Relentless demand for someone else’s confidential information can, under the right circumstances, violate the law if that information is in fact turned over. And that can be the case even when there are highly skilled, highly sophisticated business entities involved. So no transaction is immune. (Many would say that Martha Stewart’s investors are certainly sophisticated enough to know what they were doing and could not truly cave to intense pressure unless they were willing to compromise where they know they shouldn’t have.)
3. For the billionth time, we see that internal emails are the smoking guns of our time, creating way more smoke and much higher damage volume than all the six-shooters in the West. So, save your snarky remarks, or, for goodness sake, at least don’t put them in writing.
This article originally appeared on Forbes
It’s reaching a crescendo! Taylor trademark-mania is striking an unlikely note in the world of trademark law.
This is actually the second time in six months I’ve delved into the world of Swift-marks. The thing is — she’s not wrong. One can debate the need or wisdom of seeking trademark protection for a slew of song phrases or titles (“Party Like It’s 1989” or “This Sick Beat”). One of the things which has made her trademark filings an easy target is the way in which her representatives have filed the applications. The Trademark Office permits an applicant to select from one to forty-five categories (or “classes,” as they are called) in which to pigeonhole its products or services. Each class incurs an extra fee, and there is no discount for filing additional classes in the same application.
Whether you file a single application in sixteen classes, or sixteen applications in one class, the Trademark Office will charge the same amount. So, while some companies — or performers — may file a single application to cover several classes, such as music, fragrance, entertainment services, clothing and others, Taylor can choose, as she has done, to file sixteen separate applications, one for each of those products. (More on that in a minute.)
Taylor Swift (photo credit: David Shankbone)
The singer-songwriter was already taken to the cleaners in the media last year when she ran into a lawsuit on her favored “LUCKY 13” trademark (see ‘Star Wars’ — How Will Taylor Swift’s Empire Strike Back In The Lucky 13 Lawsuit,Forbes, June 2, 2014). Now we have seen how the “Swift Empire” has struck back, and it for the most part is as predictable as the rest of the lawsuit. First, they tried to get the suit discussed. The judge would not have any of it, and denied that motion without even waiting for an oral hearing. Both sides appear to be in the throes of discovery, where they demand documents and proof, and take witness testimony in depositions.
Both sides appeared to brief the legal issues well. Of course, there were a few comments aimed at minimizing the fame or questioning the motives of the plaintiffs. The plaintiffs, Lucky 13, did invoke the names of Elvis, Linda Ronstadt, and Johnny Cash to show that those famous performers of rockabilly music were mainstream enough to be confused with a general pop audience like Ms. Swift’s. Both sides showed admirable restraint in not filling their briefs with clever turns of phrase from the Taylor Swift songbook. I once had a case against Don Henley and the Eagles; how tempting it was to fill our briefs with his signature lines, like “kill all the lawyers, kill them tonight” and “lawyers clean up small details.” But just like the two sides in this case, I resisted. (In fairness, Mr. Henley was nothing but cordial despite the musical sentiments.) The Taylor Swift parties have done nothing out of the ordinary in this lawsuit. If the parties do not settle (which I would suspect they will) the court will decide if Taylor Swift’s merchandise infringed. No more, no less.
But what Taylor Swift has done with her new trademark applications is actually a teach-able moment in the trademark application process. Because, in fact, there can be a good reason to do what the Swift camp has done. A trademark provides protection for specific goods, namely, those on which you are using your mark. What if there are one or two other trademarks which you think may act as a speed bump along your road to registration? A prior registration will stop you from registering on the same or similar goods, but not on all other goods. So, while “Gallo” for wine may make it impossible for you to register your similar mark for wine, and hard even for you to register “Gallo” for certain other beverages, it will not stop you from registering “Gallo” for air conditioners.
If Taylor files a single trademark application for all classes in one combined application, just one prior registration for any of her products or services will hold up the entire sixteen-class application. Choosing to file separately for each class, though slightly unconventional, is hardly a unique approach. If someone else’s mark will become a problem, it will only slow down her efforts in one class, not all sixteen. There are other reasons (having to do with setting herself up for possible foreign trademark applications, for instance) to take the approach she has. But in truth, there is way less here than meet the eye. If the Taylor Swift Empire wants to protect words and phrases for use on t-shirts and merchandise, of course they will try to protect them.
This post originally appeared on Forbes