Is Your Marketing Firm Looking Out For You?

Sure
I have a great marketing plan for your company. You can choose one of these options:
A) I jump out of a burning plane, without a parachute, into a shark tank, filled with poisonous razor blades, with your corporate logo emblazoned across the back of my suit; OR
B) YOU do it.
Excitedly, you select option "A," comfortable in the knowledge that whether I make it or not, it is great public relations for you. Unfortunately, the next thing you know, you wake up in a hospital bed, with everything but your left pinkie toe deep fried and gnawed to the gristle.
What happened?

The Problem
I see this scenario when a company hires a new marketing firm. If the marketing firm does not have a handle on trademarks issues, problems arise quickly.

But I thought
More often than not, when a problem does arise, you thought the marketing firm was handling trademark clearance and the marketing firm thought you were handling the clearance. Thankfully, most of the time you both get lucky and neither of you gets sued over an uncleared infringing trademark. If you do get sued, however, the marketing firm will be quick to highlight for you the portion of the marketing firm contract shifting all trademark infringement liability back onto you.

Wait, it gets better
Not only that, but you likely agreed to indemnify the marketing firm if it gets drawn into the fray. So, you have to change your name, ditch your domain name, destroy all of your marketing materials and try to avoid writer's cramp from writing all of those checks for infringement, indemnification, punitive damages and attorney fees.

The Solution
The most important step to take to avoid spending the next couple years in court, or emptying your corporate bank account, is to make sure you and your marketing firm are in written agreement as to who is clearing all of the intellectual property (issues of domain names and copyright clearance are also important). If the marketing firm is taking care of the clearance, be sure that they are doing a national trademark clearance search. Google searches and state trademark searches are simply not going to to cut it. If you have a trademark attorney provide a written opinion of trademark non-infringement to you, you can also avoid liability for punitive damages and attorney fees in the event you are sued.

Cost/Benefit
The value of the trademark does not always justify the cost of a full written opinion. In some circumstances, it is worth a small amount of risk to avoid the additional up-front costs of a full search. Under these circumstances, however, it is still advisable to conduct a low cost knock-out trademark search to identify any obvious problems. While the knock-out search will not insulate you from liability, it may offer you the opportunity to choose a different trademark before you find yourself shredding thousands of dollars worth of marketing materials and begging a registered trademark owner not to sue you.

Build Your Portfolio
If you plan on using a trademark for a long time, it is probably worth investing in a federal trademark registration. After five years, you can make your federal registration incontestable. Incontestability substantially reduces the chance you may get sued for trademark infringement.
Additionally, if someone else starts using your federally registered trademark on similar goods or services, you have the potential of obtaining triple damages AND attorney fees. Having one or more federally registered trademarks in your portfolio can add appreciably to your bottom line.

Bottom Line
It does not matter if you do a simple knock out search or end up registering your trademark. The important thing is to determine whether you or your marketing firm is responsible for trademark clearance. Once you know who is responsible, you can decide how much risk you want to undertake, how likely it is you might run into an infringement situation and how much you are willing to spend to avoid litigation.

Brett Trout

trademark infringement

How Long Does It Take to Get a Patent or a Trademark?

You Want it When?
People are often surprised how long it takes to obtain a patent or a trademark. Copyright registrations often issue in less than a year. Why then, do patents and trademarks take so much longer? The primary reason is that there is no requirement that the copyrighted material be unique. Therefore, the Copyright Office does not have to hire anyone to run a search to see if anything like it has already been registered. Patent and trademark applications however, do have to be unique.

Expert examination
As you might imagine, if there is already a patent or trademark on your exact invention or name, rejecting your application takes little effort. Not surprisingly, the vetting becomes much more complex when the existing registrations are close, but not exact. Making determinations of unregistrable similarity requires someone with an undergraduate degree in engineering or science in the case of patents, and a law degree in the case of trademarks. With 467,000 patent applications and 394,000 trademark applications being filed every year, there is somewhat more demand for these jobs than there are applicants to fulfill them. Right now, the United States Patent and Trademark Office(USPTO) has a backlog of over 1 million patent applications.

Patent pending
The USPTO has just released its annual Performance and Accountability Report. The report states that, on average, it takes an average of 31.9 months to obtain your patent (or a final rejection if your invention is not patentable), and 15.1 months to obtain a trademark registration (or a final rejection). These are, of course, averages. Patents in high-tech fields like software and communications take an average of 42.9 and 43.1 months respectively.

Speeding things up
The USPTO is intent on bringing those numbers down through the hiring of new examiners. With the USPTO managing 99.9% of its patent applications and 99% of its trademark applications electronically, perhaps you can convince them to work from home, as in Des Moines. Granted Washington D.C.'s has a much higher murder rate than Des Moines, but there is really no substitute for getting a deer in the headlights look from a real deer in your actual headlights.

Sorry, I am getting all excited about deer season next week. Perhaps this year I can bring one home without one of my Suburban's quarter panels having to give up its life in the process.

Brett Trout

USPTO patent trademark

Second Life Patent and Trademark Office

According to Virtually Blind, Second Life players FlipperPA Peregrine (aka Tim Allen) and Michael Eckstein have opened up a virtual Second Life Patent and Trademark Office (SLPTO) within the video game. This comes on the heels of six Second Life gamers suing Rase Kenzo (aka Thomas Simon) for stealing their intellectual property. The allegations range from Unfair Competition, to Copyright Infringement, to Civil Conspiracy. The designs allegedly stolen include clothing, shoes and beds.

The SLPTO does not have any immediate plans for generating income, its owners have wisely stepped back and decided to let Second Life denizens choose how the SLPTO can best be utilized. Without legal teeth to back up the program, however, I doubt the SLPTO will solve many problems. Even if Second Life owner Linden Lab decides to support the new venture through enforcement, it is difficult to see how intellectual property registration, standing alone, gets anyone anywhere.

I mean I love intellectual property. I could read about it for hours. Methinks, however, most gamers, even Second Life gamers, might find intellectual property protection self study more repulsive than physiologically accurate avatars. Better protection of intellectual property merely begets better schemes of circumvention. As Second Life intellectual property issues become more complex and involve greater sums of money, the assistance of a First Life Intellectual Property attorney will become a necessity, rather than a luxury.

Brett Trout

Second Life USPTO patent trademark

Please Don't Write Your Own Cease and Desist Letter

Blowing up in your face.
When faced with someone stealing their patents or trademarks, some companies opt to craft their own little witty missive to the perpetrator. Sometimes these letters work. More often they don’t. The problem is that when they don’t, the letter writer typically miscalculates the blast zone by a rather wide margin. Like Wile E. Coyote after a failed bombing, the scrivener stands addled and smoldering, wondering how things could possibly gone so horribly awry.

What is the point?
Getting an infringer to stop infringing is merely one, lesser, goal of a cease and desist letter. The primary goal of a cease and desist letter is to set the stage for a subsequent lawsuit. By laying out your rights and the application of the law to the infringer’s acts, a properly drafted cease and desist letter puts the infringer on notice of the alleged infringement. The better positioned you are to win a subsequent lawsuit, the more likely the other side is to settle.

Why write your own?
An improperly drafted cease and desist letter is a lawyer’s dream. While bad cease and desist letters rarely accomplish their intended goal, their unintended consequences can keep your lawyers busy for years. Most clients assume that the worst thing that can happen from a bad cease and desist letter is that they will have to try again with an attorney. I find it strange that no one has the same perception about taking out their own appendix. Perhaps because not enough companies have legal insurance.

The Good . . .
A bad cease and desist letter, which convinces an infringer to stop infringing and drop a bag of pecuniary repentance, at your doorstep, may exist. The flying spaghetti monster might exist too. It’s just that I have never seen either one.

. . . the Bad . . .
Unintentionally undermining your legal position, by providing the infringer ambiguous statements the infringer can twist to its advantage, is common. Often time the only thing the infringer has going for it is a poorly worded cease and desist letter. Infringers will even argue that a poorly drafted cease and desist letter actually gave them permission to continue with their infringing activities. A bad letter can undermine your credibility with the jury, disclose your theory of the case (allowing the infringer time to reinvent its story), undermine licensing opportunities and encourage the recipient to start pulling an Ollie North on the which might otherwise have helped you.

. . . and the Ugly.
One of the worst results of a bad cease and desist letter is that YOU sued in the infringer’s home courthouse. Infringers can find many causes of action to throw into a lawsuit. The obvious choice is a request for a Declaratory Judgment from the court that they are not infringing. Depending
upon whom you send the cease and desist letter to, other claims may include misuse, defamation, interference with contractual relations and/or interference with prospective business advantage, just to name a few. The worst thing about the infringer suing YOU, is that you are no longer in control of the case. You can no longer decide to “just drop it” and go on your way. You are in until the infringer says you are out, which may be tens of thousands, hundreds of thousands, or even millions of dollars, later.

Run the Numbers.
There is no “standard” cease and desist letter. There arehundreds of different types posted all over the Internet. The type of infringement, the licensing potential, the history between the parties, the likelihood of litigation and the damages at stake all bear upon whether the cease and desist letter is going to be soft, medium of hard. Before you write a cease and desist letter, find out how much it will cost to have one professionally drafted. Next, estimate what a bad cease and desist letter can cost you and your company in time and money (You might even want to factor in the potential that upon receipt of your adroitly worded cease and desist letter, the recipient might attempt to take out their own appendix).

Brett Trout

cease and desist patent trademark

Maybe they could trademark their middle finger

Oprah's ex-boyfriend, movie critic Roger Ebert is in a bit of a tiff with Disney over what Ebert feels was an "offensively low" offer to continue hosting At the Movies with Ebert and Roeper. Ebert responded with a counter-offer. Instead of responding with a counter-counter-offer however, Disney implied Ebert could use his proprietary two thumbs to position the counter offer well beyond the reach of his proctologist.

Registered as a federal trademark in 1995, Gene Siskel and Roger Ebert began using the "two thumbs up" designation as far back as 1986. According to the movie review website Rotten Tomatoes, Ebert is claiming that it was Disney that unilaterally decided to stop using the iconic thumbs designation after receiving Ebert's counter-offer. Disney-ABC maintains that it was Ebert who decided to withhold the thumbs until a new contract was signed. As for now, the show seems to be proceeding without Ebert or thumbs while Ebert continues to write movie reviews for his website.

While he waits for an answer that may never come, at least Roger Ebert can use his trademarked thumbs as tiny backrests for two fist-sized chairs.

Brett Trout

Disney Ebert trademark two thumbs up

Yankee Fan Gang Fashion

Feenin' about increasing your chances of getting shanked at the next Yankee/Red Sox game without having to rely on just your personality and getting your crunk on? Grab one of new NY gangsta hats from New Era. Choose from a Bloods, Crips or Latin Kings motif*. Heck, why not collect them all. Just be sure not to wear them all at the same time, as the surgeon general has determined this may drastically increases your chances of lead poisoning. Yes folks, this is the first MLB officially licensed product the mere wearing of which runs the same risk of mortality as returning sunglasses to OJ's ex.

No trademark infringement here, these are, or were, officially licensed products. That is until MLB received a Cat 5 storm of protest. Now, according to Silvia Alvarez, the league's director of multicultural and charitable communications, MLB is trying to get the hats off store shelves. Multicultural equanimity aside, this incident threatens to further tarnish the already beleaguered trademarks of the MLB. Between steroids and off-field antics, pro-gang hats could not have come at a worst time for a sport trying to entice kids back to the ballpark.

*If you want to represent with a NY hat, you better do it soon. And, oh yeah, just remember to pack the gat, or you might not be back.

Brett Trout

trademark MLB New Era

Nobody Puts Baby in the Corner

According to a lawsuit filed by Lionsgate Entertainment, at least fifteen companies are selling T-shirts emblazoned with that famous phrase from the movie Dirty Dancing. The Hollywood Reporter, Esq. reports that Lionsgate is alleging trademark infringement under the Lanham Act, unfair competition under California's Business & Professions Code 17200, common law unfair competition and copyright infringement.

Not surprisingly, I was not able to find a federal trademark for "Nobody Puts Baby in the Corner" registered to anyone. While the absence of a federal trademark registration does not mean that Lionsgate cannot sue under the Lanham Act, it makes one wonder why Lionsgate never federally registered such a valuable trademark.

Perhaps we can find the answer in the United States Patent and Trademark Office (USPTO) Trademark Manual of Examining Procedure (TMEP):

1202.03(f)(i) Slogans or Words Used on the Goods

Slogans or phrases used on items such as t-shirts andsweatshirts, jewelry, and ceramic plates have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating source of the goods. See Damn I'm Good Inc. v. Sakowitz, Inc., 514 F. Supp. 1357, 212 USPQ 684 (S.D.N.Y. 1981) ("DAMN I'M GOOD," inscribed in large letters on bracelets and used on hang tags affixed to the goods, found to be without any source-indicating significance); In re Pro-Line Corp., 28 USPQ2d 1141 (TTAB 1993) (BLACKER THE COLLEGE SWEETER THE KNOWLEDGE primarily ornamental slogan that is not likely to be perceived as source indicator); In re Dimitri's Inc., 9 USPQ2d 1666 (TTAB 1988) ("SUMO," as used in connection with stylized representations of sumo wrestlers on applicant's T-shirts andbaseball-style caps); In re Astro-Gods Inc., 223 USPQ 621, 624 (TTAB 1984) ("[T]he designation 'ASTRO GODS' and design is not likely to be perceived as anything other than part of the thematic whole of the ornamentation of applicant's shirts."); In re Original Red Plate Co., 223 USPQ 836 (TTAB 1984) ("YOU ARE SPECIAL TODAY" for ceramic plates found to be without any source-indicating significance).

Unfortunately for Lionsgate, copyright does not protect names, titles, slogans, or short phrases either.

Notwithstanding the foregoing, Lionsgate might have a shot if they can show consumers associate T-shirts bearing the phrase "Nobody puts baby in the corner" as indicating merchandise supplied by Lionsgate, or if Lionsgate can show the phrase is a sufficiently famous trademark that use by third parties on goods like T-shirts dilutes their trademark. Methinks, however, that these claims seem tenuous, at best. I would love to see how this one plays out, but I see it ending with a settled whimper, rather than a judicial bang.

In this case, it appears Lionsgate may be relying more heavily on its prima donna persona to win this pas de deux than on any true legal tango. If Liongate's tiny dance partner can survive long enough to chassez, Lionsgate could be left looking like it has two left feet. (I apologize profusely for channelling Gene Shalit, but I have very little control over these things).

If Lionsgate takes this all the way to a jury, another line from that movie may just spring to mind. "You were right Johnny, you can't win no matter what you do!"

Brett Trout

slogans Lionsgate trademark copyright

Johnson & Johnson Both Red and Cross

Johnson & Johnson began using the Red Cross trademark for its products as far back as 1887. According to the Kilmer House:

In 1895, as a contingency plan, Robert Wood Johnson the first and Fred Kilmer had started discussions with Clara Barton about the use of the Red Cross symbol. The Johnson brothers asserted that they had established the right to use the trademark they had been using for eight years. As a result, after a number of meetings, an agreement was signed between Johnson & Johnson and the American National Red Cross on January 29, 1895 that recognized Johnson & Johnson’s rights. It stated “It is agreed that the said Johnson & Johnson are now and for a long time past have been entitled at common law and otherwise to the exclusive use of the symbol of a red cross as a trade-mark.” The document was signed by R. W. Johnson and Clara Barton. Finally, a decade after the agreement, President Theodore Roosevelt signed legislation protecting the American Red Cross’s use of the red cross mark, but at the same time reserving the rights of Johnson & Johnson to use it too.

For over a century, the American Red Cross (ARC) and Johnson & Johnson (J&J) have existed in harmony, with ARC using the trademark in conjunction with relief efforts and J&J using the trademark in association goods such as first aid kits. Recently however, ARC has been licensing third parties to use the red cross trademark in association with things like surgical gloves, combs and toothbrushes.

In response, J&J sued ARC for trademark infringement, issuing this press release:

Johnson & Johnson began using the Red Cross design and "Red Cross" word trademarks in 1887, predating the formation of the American Red Cross. The Company has had exclusive rights to use the Red Cross trademark on commercial products within its longstanding product categories for over 100 years. Since its creation, the American Red Cross has at all times possessed only the rights to use the Red Cross trademark in connection with its non-profit relief services.

...

For the past several months, Johnson & Johnson has attempted to resolve this issue through cooperation and discussion with the ARC, and recently offered mediation, to no avail. The Company was left with no choice but to seek protection of our trademark rights through the courts.

So who is the bad guy here? Well, you could view it as a multi-national corporation picking on a charity. Or, you could look at it as a charity's outright theft of property from one of its biggest donors. If ARC employees had walked into a store and stole thousands of dollars worth of J&J products, would it be any less of a crime simply because ARC is a charity?

Just because intellectual property is intellectual, does not mean it is not property. Even if J&J had wanted to overlook the theft, J&J's refusal to pursue ARC for the misappropriation of J&J's intellectual property, could cause the red cross trademark to become generic. This would strip J&J of over a century of good will in one of the world's most famous trademarks.

While some pundits see this as a publicity war, I see it as nothing more than an attempt by ARC to extort property from J&J under the threat of bad press. The only bad guy here is the American Red Cross. Time for them to admit they are wrong and stop taking things that do not belong to them.

Thanks to Mike Colwell of the Business Innovation Zone (BIZ) for the heads up.

Brett Trout

red cross johnson johnson trademark

Have you trademarked your Short Code?

Common Short Codes (CSC) are five digit numbers ranging from 20000 to 99999, or six digit numbers ranging from 222222 to 899999. Cell phone and PDA owners use CSCs to to send short message service (SMS) text messages to a commercial entity. Whereas typically text messages go directly to individuals, CSC messages are more often associated with commercial services, such as voting, polling, games, contests, coupons, mobile payments and other interactive applications.

According to Julia Anne Matheson and Anna Bonny of Finnegan Henderson, SMS generated texting in the U.S. generated $1.24 billion during the first half of 2005, up 154% over 2004. By next year, users will send an estimated two trillion SMS messages.

Obtaining a CSC involves registration with the Common Short Code Administration (CSCA) for CSC leases of three (3), six (6) or twelve (12) months. The cost of CSC leases varies from $500 per month for random CSCs, to $1,000 a month for specifically requested CSCs.

While there are only 757,778 or so CSCs available, as compared to a virtually unlimited number of domain names and telephone numbers, the extremely high cost of CSCs should prevent CSCsquatters from cornering the market. If you want a particular CSC corresponding to a particular five or six letter word, however, time is indeed of the essence.

Just as companies snapped up telephone numbers corresponding to various words spelled out on a telephone keypad, companies are now snapping up CSCs corresponding to particular words as well. Specific language in the CSCA sublicense agreement states "You agree that You will not take any action that would cause You to acquire any trademark, trade name or trade dress rights in the CSC." Notwithstanding, companies like United Parcel Service of America, Inc. (UPS) are filing federal trademark registrations covering five letter words like "BROWN" as used in association with "sms, mss and short-code messaging services and wireless telephone networks."

While trademark disputes between two parties seeking the same CSC are indeed possible, the difficulty in determining ownership of CSCs, the multiple number of words associated with a CSC, the specific reservation of intellectual property rights in the CSC by CSCA, the non-existence of a special forum like ICANN for the resolution of CSC intellectual property disputes and the high costs of ownership, all indicate trademark disputes over CSCs are likely to be few and far between.

Thanks to Cedar Rapids attorney Matt Krigbaum for the story idea.

Brett Trout

CSC short code trademark CSCA

How Intellectual Property Can Ruin Your Business

Rush Nigut and I were speaking just the other day about how general practitioners or even transactional law attorneys often screw things up for their clients when they start messing with intellectual property issues. While they may grasp the broad issues, there are far too many trips and traps to go wandering through the IP jungle without at least a knowledgeable guide.

I then had a plate o' shrimp moment purusing Ron Coleman's informative Likelihood of Confusion blog. Apparently a couple guys at Sheppard Mullin were thinking the same thing Rush and I were. Check out the blog post The Top Ten Ways Copyright Law Can Mess Up Your Transaction. While you are at it, you might want to extrapolate those fine points regarding copyright to patent, trademark, trade secret and cyberlaw as well.

Brett Trout

copyright patent trademark trade secret intellectual property cyberlaw

Collective Trademarks

What is a “collective” trademark? A collective mark is a trademark used by the members of a group to indicate association with that group. Popular collective trademarks include American Bar Association, Realtor Associate, Rotary International, American Institute of Certified Public Accountants, as well as the names of various fraternities and sororities. A collective trademark, may also indicate membership in an organization, such as a union or a cooperative.

The United States Patent and Trademark Office reviews collective trademark applications the same way they review other trademark applications, using generally similar registrability criteria. Rules regarding things like descriptiveness and disclaimers are identical. The required specimens showing use of the collective mark are a little different. Specimens for a collective mark registration must show the collective mark used by a member, on, or in connection with goods or services offered by the member. Unlike typical trademarks, collective trademarks are not used by the owner of the trademark and specimens showing use by the owner are insufficient to demonstrate the requisite use for federal registration.

When applying for federal registration of a collective trademark, the owner must indicate that the owner is, or intends to, exercise legitimate control over the use of the collective trademark in commerce by its members. Unlike typical trademark applications, for a collective trademark application, the owner must specify who can use the trademark, the nature of the relationship between the owner and the users and how the owner is controlling the use of the collective trademark.

If the owner’s bylaws or other written policies detail how the owner is controlling the use of the trademark, it is sufficient to state this in the application. Otherwise, a written statement, such as “Applicant controls the use of the mark by the members in the following manner: [specify how owner is controlling the use of the trademark]” is acceptable

To protect the public from unauthorized use of a collective mark, it is important for the collective mark owner to detail, in a written policy, the following information:

• The exact trademark and specifications for how it is to be used;
• Identification of the owner of the collective trademark;
• Identification of members allowed to use the collective trademark;
• Membership criteria;
• How the owner controls the use of the collective trademark; and
• The consequences of unauthorized use of the collective trademark.

As collective marks are a little different, and involve a little more technicality, it is best to discuss your proposed collective trademark use with a trusted trademark attorney before proceeding with use or registration of the trademark.

Brett Trout

collective mark collective trademark trademark office trademark lawyer

Keep Your Nose Off My Smell

The global marketplace comprises thousands of languages. Thankfully intellectual property protection for sounds and smells now transcends polyglotonomy (ok I just made that word up). The race to protect sounds and smells with trademarks and copyrights is definitely heating up. Countries like China are filing new trademark applications in record numbers, looking to snatch up heretofore unprotected intellectual property such as sounds and smells.

Last March, Member States of the World Intellectual Property Organization (WIPO) thought the issue was important enough to include provisions for "non-visible" trademarks in the latest international treaty. The Singapore Treaty on the Law of Trademarks now defines a framework for reproducing of non-visible marks, such as sound and smell marks.

For more info on this burgeoning topic, check the TTABlog’s post on the protection of sound marks and and this WIPO article on obtaining a copyright on a smell. The TTABlog also has a link to a comprehensive article by Kevin McCormick published in the Sept-Oct edition of The Trademark Reporter on the registration of sounds as trademarks. Very interesting reading -- even if you are not a trademark lawyer.

Brett Trout

Other Related Topics:
Trademark, Singapore Treaty, Trademark Sounds, Trademark Smells, Copyright Smells