Create, Consult, Control
News & commentary on intellectual property issues.
May202010 | Steve O'Donnell
Is there a better way to police a trademark?
Recently I posted about Chick-Fil-A’s actions against someone using the mark “Eat More Produce.” Phoenix Patent Attorney commented on that post and brought up another recent instance about Monster (the energy drink) going after Vermonster beer for a similar alleged infringement and mentioned how certain of these cease and desist letters find their own life on social media. . . which got me thinking, should attorneys rethink their strategy in cases like this because of social media?
Both Chick-Fil-A and Monster have suffered some negative publicity blowback due to their actions because many people view their actions as the big guy going after the little guy for an alleged infringement that is, really, pretty minor.
This brings up an interesting quandary: the trademark owner has to police their mark or they risk losing it, but there can be public opinion fallout if they police their mark against much smaller entities. . . is there a way to police without looking like a jerk?
I think there is. If the alleged infringement is borderline, where it touches upon someone else’s trademark, but doesn’t quite stomp on it, maybe trademark lawyers should take a different approach.
If we assume that most of these issues will eventually be resolved with an agreement reached after a few iterations of correspondence, why not just cut to the chase? Instead of the trademark owner firing off a standard cease and desist letter, what if they sent a letter pointing out what they think is the proper legal standard, but instead of making a demand, offered a reasonable settlement conditioned on the recipient not taking it to the press?
If Chick-Fil-A knows that they’d be satisfied with the “Eat More Produce” company agreeing to stay out of the relevant markets, they could have stated that in their first letter and conditioned such a offer on the terms of the letter being kept quiet. Chick-Fil-A would be happy because they’re protected their mark and their image, the other company would be happy because they’ve saved on attorney fees and don’t have a cloud of uncertainty hanging over their heads.
I’m not suggesting that the traditional model be abandoned, and many times, the only reasonable approach is going to be to take the cease/desist route.
I’m interested to hear what other trademark-minded people think about this approach, so please comment below, even if (especially if) you think this is a bad idea.
May182010 | Steve O'Donnell
Chick-Fil-A only wants you to eat more chicken.
As reported by the Consumerist, Chick-Fil-A has a beef (get it?) with a company suing the slogan “Eat More Produce.” Is this a case of someone being a bit over zealous and firing off unreasonable cease and desist demands?
On its face, this does sound like a pretty silly controversy. I think it’s doubtful that either Chick-Fil-A or their attorneys really think that someone using “Eat More Produce” will harm their business identity, but is that actually the concern?
I suspect that the actual impetus for the letter is less concerned with this one specific alleged infringement than it is with stopping a problem before it becomes one. If I was Chick-Fil-A’s lawyer (I’m not, but Chick-Fil-A--call me)I would suggest doing the same thing.
If a trademark owner fails to protect their trademark they run the risk of losing it. When a brand becomes so tightly linked to a product that the terms become interchangeable, then the trademark loses it’s unique quality. Escalator used to be a trademark but has become a generic term for a moving staircase; both Kleenex and more recently, Google, have been fighting against this erosion for years.
Consider this hypothetical: Chick-Fil-A does nothing about “Eat More Produce” because its considered too far-fetched of a claim to make; later, someone starts using “Eat More Seafood” and Chick-Fil-A does nothing because they don’t sell seafood; later someone starts using “Eat Mor Tofu,” that’s getting closer, the misspelled “More” is making this a pretty obvious trademark issue. Let’s go one farther and say that some eventually starts using “Eat Mor Turkey.” That finally gets Chick-Fil-A’s feathers ruffled so they take it to court. The judge looks at how Chick-Fil-A has allowed others to use similar slogans without doing anything to police their mark and quite possibly rules that Chick-Fil-A has lost their trademark because they haven’t done anything to protect it.
On the other hand, if Chick-Fil-A had contacted the minor alleged infringers and come to some agreement with each, they would have that paper trail to prove that they haven’t given up on protecting their trademark.
Although I can’t predict what will eventually happen in this matter, my guess is that each side will send a couple letters to the other side before an agreement is made that Chick-Fil-A will not protest the “Eat More Produce” company’s slogan as long as they refrain from entering the fast food or poultry markets. That would protect Chick-Fil-A and let the other company continue as they’ve been without either side having to commit to costly litigation with an uncertain ultimate result.
Apr202010 | Steve O'Donnell
What I learned at the 2010 Launch Music Conference
It’s been a long time since the last music conference I attended (when I was on the other side of the fence). It’s interesting to see how little has changed over the last 20 or so years, but what can we do to change the things that should change?
I had a table at the 2010 Launch Music Conference last weekend and met a nice group of musicians and promotional professionals (and handed out a lot of brochures). It’s oddly comforting that some things have remained the same over the years, and probably will forever--musicians still wear genital-crushingly tight jeans and spend a disproportionate amount of time on their hair, they still get tattooed and still wear boots. Unfortunately, musicians still get screwed over. I’m not going to convince anyone to spend less time on their hair (and I’d never try) but hopefully I can convince someone that with a little planning, and a little legal help, they can avoid some of the most common headaches they’re likely to run into.
First off, a poor-man’s copyright isn’t worth the postage. Just don’t bother. Copyright registration is relatively inexpensive and quick. Copyright is also one of the few things that can benefit from an economy of scale, i.e., the more tracks you register at once, the less your attorney is probably going to charge you for each registration.
Secondly, about your band’s name, someone’s already using it. Ok, maybe that’s not the case, but you should assume it is, at least until you do some research and make sure that it’s not. Also, even it it’s all yours today, what happens when someone across the country comes up with the same name? What if they get picked up by a label before you, and register the name as their trademark? Do you then have to change your name? The best thing to do is to register a trademark for you band’s name. Maybe it doesn’t make sense right now to spend $1000 or so right now on a federal registration, but a state registration is a good first step, and probably a lot cheaper.
Thirdly, homemade contracts aren’t necessarily better than no contract, and might be worse. On one hand, I guess it shows to that punk isn’t dead, the DIY attitude is still thriving, but the business side of things should be left to the business people. No episode of Behind the Music contains the line "I'm sure glad we never hired a lawyer."
The biggest problem I heard was bands just not getting paid. Whether your agreement is for a flat payment or for a percentage of the gate, a lot of venues don’t like to pay musicians. The best way to avoid this is to have a contract upfront, if possible. It seems a lot of (especially smaller) venues shy away from contracts and think you should just trust them, maybe so they feel better about not paying. If that fails, the natural inclination is to resort to a little violent self-help. Generally, that’s not the best way of doing things and can lead to some other problems, such as not getting booked anywhere but the police station. Something that’s usually pretty simple and straight forward is a District Justice (Small Claims) lawsuit. These suits can be handled for a pretty small filing fee and without a lawyer, although it’s always a good idea to hire a lawyer if you can--some may take your case for a cut of what you win. Small Claims is limited (in PA) to claims under $8000 so if your agreed fee was more than that, you’ll need to file somewhere else.
Lastly, I also learned that some people like to dress as members of the Imperial Fleet and walk around the convention center.
Feb182010 | Steve O'Donnell
Avoiding Trademark issues when naming your band
Most people don’t realize that all of the issues one can run into when choosing a brand name for a product also come up in the context of band names. In fact, these problems can cause an even greater headache for bands than for other businesses.
David: So we became The Originals.
Nigel: Right.
David: And we had to change our name actually....
Nigel: Well there was, there was another group in the east end called The
Originals and we had to rename ourselves.
David: The New Originals.
Bands often change their names to differentiate themselves from other bands. Black Sabbath was Earth before they found another band named Earth was on the same bill as them. The trouble finding a great band name is the same as the problem with finding a great domain name, or a great product name. . . all the best ones seem to be taken. The problem might even be worse for bands because of the nature of a business where bands form and break up all the time, musicians are often in more than one band at any given time, and bands often perform under a different name for different audiences. In other words, the music business rips through band names at an insane rate.
The most common solution to a trademark issue involving a band is that whoever had it first gets to keep it and the second user has to change their name. Specific facts can change that general observation, or at least open up other possibilities, but usually the first to use it has greater rights to the name. Certainly, if your band is gaining steam, the last thing you want to do is change your name because a skiffle band half-way across the country started using the same name a week before you did.
It’s difficult for me to say when a band should trademark its name. Ideally, it’s done as early as possible, but for many bands that just doesn’t make sense. It takes a while to get a stable lineup and have some reliable income before a band really starts to think of themselves as a business and realize that they need to form a legal entity or at least have an operating agreement between members, decide how to handle copyrights, trademark their name, etc. Most bands never get to the point where any of this matters, the trick is knowing when to start thinking about these issues, and hopefully that point is before there is a problem.
If you’re looking for a name for your band I do have a couple suggestions: 1) make up a word, chances are that if you make up a word that you won’t find that someone else is already using it; 2) use a two or three word name; 3) search Google to see if someone is using the name; 4) search a band name registry like bandname.com, and bandnameprotection.com; and 5) have a trademark attorney search for similar names. Admittedly, few bands are going to take my advice of speaking with a trademark attorney, at least early in the game, but doing so is the best way of finding out about possible issues before they become a real problem.
Feb172010 | Steve O'Donnell
Two trademark cautionary tales
Over the past month I’ve had two people come to me with serious trademark issues that could have been easily avoided by speaking with a trademark attorney early in their branding process.
In the first instance, my client, a business that is primarily intrastate, but does a small amount of interstate commerce, received a letter from an attorney warning them that another business has filed a registration for the trademark and plans to enforce it if my client attempts to expand beyond their current geographic market. My client was using the name first in certain markets, so they can continue to use the name as they have been, but will run into trouble if they try to expand. My client doesn’t want to give up the name, but does have plans to expand, which is where their problem lies.
Since my client was engaged in a small amount of interstate commerce, they could have registered the trademark years before the other registrant came around. Unfortunately, they didn’t think about trademarking until they ran into this trouble. We’re still considering possible courses of action.
In the second instance, my client started using a trademark that is very similar to a mark that had already been registered. It was a completely innocent mistake and my client didn’t try to leech off the reputation of the other company, but that doesn’t matter. Trademark law attempts to eliminate consumer confusion and in this case, the marks were close enough to each other, and in the exact same market, that a determination of anything but trademark infringement is unlikely. That client has two options: fight it, or stop using the name. Fighting it is expensive and the likely outcome is not good, rolling over means that my client loses a large amount of their name recognition and google-juice.
If that client had engaged a trademark attorney to vet their proposed name or to try to register that trademark, the other user would likely have been identified and the problem avoided.
Compared to the time and money involved in creating and building a brand, having an attorney protect it is a small expense. Yet, without that relatively minor investment, all of the rest can be a waste.
Feb052010 | Steve O'Donnell
Infringe? It’s a business decision.
A common question all attorneys get is “am I gonna get in trouble for this?” For some things your attorney will be able to give you a decent answer. . . “yes, that’s a really dumb idea” or “no, that’s fine,” but much more common is a more stereotypical lawyer answer of “it depends.” For intellectual property questions, I usually dredge up middle school algebra.
Every decision can be made with the help of an equation. Let’s say your burning question is "should I hit this guy at the bar that keeps looking at me?" The left side of the equation might be:
“(chance of me losing the fight)*(chance of me landing in jail)”
The right side of the equation might be “(how much would I love to pop this guy?)*(chance that the girl at the end likes macho jerks)”
If the left side of the equation is greater than the right side, not hitting the other guy is favored. Now, of course, you can’t know the real values of any of the variables, but you can estimate. If there is a chance that they guy is really looking at someone else or just has a facial tick, and he’s a 300-lb monster sitting next to his buddy the cop, well, stay seated and order another drink. If he’s obviously being a jerk, you’ve got 40lbs on him, there are no cops around, and you know the girl likes macho jerks, the equation favors popping him. Unknown variables are also in play: maybe he’s a ninja, or an android, or a ninja android. You can’t know everything, but the more information you have, the better your decision making process will be.
It’s similar to questions I get all the time concerning intellectual property. Only a fool would make an uninformed decision. Even a gambler willing to risk big is only going to do so after evaluating the chance of losing with the possible payoff.
It’s part of my job to identify and flesh out what variables are in play. If the question involves using an image for a blog post from and there is a plausible fair use argument, that’s one thing; if the question involves making and selling t-shirts with Mickey Mouse on them, that’s a much different equation.
Dec152009 | Steve O'Donnell
The Zappa Family Trust vs Assorted Zappa Tribute Bands
Frank’s widow, Gail Zappa, head of the Zappa Family Trust has taken issue with a number of Frank Zappa tribute bands and has successfully shut down shows by threatening legal action. Is this an example of abuse or does she have a viable legal theory?
First, Happy Zappadan everyone! Zappadan is, of course, the annual celebration of Frank Zappa’s work that runs from December 4 (the date of his death, a/k/a/ BummerNacht) until December 21 (his birthday, a/k/a Day Zero of Zappadan).
As I was saying, the Zappa Family Trust has targeted Zappa tribute bands and has shut down some shows by those acts that don’t have the Trust’s blessing to perform. Not so surprisingly, one act that does have the Trust’s permission, Zappa Plays Zappa, is headed by Dweezil Zappa.
To be fair, it has been at least a year since I heard rumblings about the Trust, so maybe Gail has softened a bit. Regardless, Whether these threats are primarily motivated by the desire to make sure that Frank’s music is presented only by those gifted enough to pull off his challenging pieces, or simple greed is a question I will leave to others to debate. I’m more interested in whether the Trust has legal support for their stance.
The obvious legal theory, copyright, probably won’t help the Trust. A quick search of ASCAP’s site shows that a number of Frank’s works are licensed through them. What that means, is that any venue that takes out a license from ASCAP can host bands that cover those songs. Still more works may be licensed by BMI or SESAC.
The other legal theory I can think of is a little more subtle. Trademark law allows a business to keep others from using their trademark in a way that is likely to confuse the public. A quick search turned up 34 trademarks owned by the Trust covering, among other things, the name “Frank Zappa” as used in musical performances and recordings.
Certainly, anyone that would think of going to a Zappa tribute will know that Frank is not going to be there, so can there be any real public confusion? Maybe. One might see the “Frank Zappa” mark, or a similar mark advertised and and think that the Zappa family is behind the show.
Another possibility is that these non-sanctioned shows might tend to reduce the distinctiveness of the Frank Zappa brand. If so, the tribute band could be diluting the trademark, even though there is no likelihood of confusion.
Lastly, trademarks that aren’t defended by their owners can be lost, so the Trust might just be overly cautious about preventing that from happening.
For the trademark theory to work, a tribute band has to be using a Trademark owned by the Trust. A group in KISS makeup called Love Gun that played Frank Zappa’s music probably wouldn’t run into trouble with the Trust, at least not under a Trademark theory.
Bottom line, it may seem heavy handed, but Gail Zappa has a plausible legal theory to back her up when she tries to shut down Frank Zappa tributes.
Check here, here and here for posts by others on the subject.
Image: http://www.flickr.com/photos/swanksalot/ / CC BY-SA 2.0
Dec012009 | Steve O'Donnell
Why Archie drank generic beer
I used to be confused that some TV shows would make up their own prop brands while other shows used real-life products. I assumed it was because of trademark or copyright licensing issues. It’s actually less interesting.
First, most TV or movie uses of a real product are not going to support a claim of trademark infringement. The touchstone of trademark infringement is likelihood of confusion and that’s simply not going to happen because a character used a branded prop. If I see Frodo Baggins eat Funyuns and drink a 7up I’m not going to think that either company made the movie, although I may question the purity of the goods at the concession stand because I’d be pretty sure there was more than salt in the salt shaker.
Depending on the depiction, there might be an exception for brand tarnishment. That could occur if a brand was used in a manner that would tend to offend people, but a filmmaker would probably have to go out of their way to embarrass a brand before having to worry about a tarnishment claim.
Most routine displays of copyrighted material also won’t be actionable, more substantial displays might be actionable in certain circumstances. For example, as if the horrible abomination of a movie that was Batman Forever needed any more trouble, the studio was sued over filming an architectural work. Batman won. Batman always wins.
No, the reason that sometimes a show uses a real brand and sometimes doesn’t is ad revenue.
In a simpler time, it was thought that by keeping brands out of a show that advertising opportunities would be greater. After all, Miller Lite might not want to buy ads on “All in the Family” if Archie was drinking something better in the episode. Miller, however, probably won’t care if Archie has a couple plain-labeled “beers” during a show.
On the other hand, shows can sell product placement space during the show itself to advertisers, and for a number of years we saw both prop brands and real brands. The choice was likely dictated by whether there was a sponsor willing to pay enough for product placement to offset concerns that it would keep competitors from buying traditional commercials.
Since the debut of DVRs and other ways of avoiding commercial breaks there has been a steady shift towards using more product placement ads. Now the only time prop brands are used are probably when a sponsor couldn’t be found.
We may never again see Archie’s favorite beer outside of reruns.
Image licensed under the Creative Commons Attribution-Noncommercial 2.0 Generic license
Oct282009 | Steve O'Donnell
Importance of a Registered Trademark to an Overall Branding Strategy
Do you need to protect your business identity with a registered trademark? That depends on how angry you’ll be if someone else starts using your business name or identifying logos.
For example, imagine that I started selling cans of my Open Source Chili under the brand name “Steve’s Chili” at a local market, and further imagine that the labels on the cans had a unique graphic that made them stand out from other canned foods. How angry am I going to be if I find out that someone else has started selling a “Steve’s Chili” in another state? Will I be angrier if I also discover that they’re using a similar design on their labels? What if I was using a more unique name, would I be angrier if someone else started using it?
What if instead of selling cans of chili I open a restaurant. In that case, I might not care at all if someone across the country uses the same name for their restaurant, but I might care if someone copies the unique graphic I had designed for my signage.
If I was the first to use “Steve’s Chili” as a trademark, even if I don’t register it, I will likely have superior rights to someone else using the same mark, at least in the area where I’m doing business. If I have no plans to grow beyond where I’m already established I might not care if someone a few states away uses the same mark and I might not bother to register a trademark.
A good test is to imagine that a year after you open, someone two states over starts a similar business with the same or similar name and using the same or similar graphics. If that makes a vein pop out of your forehead, you should contact a trademark attorney. If that possibility doesn’t really matter to you or if you’re not doing business across state lines, maybe you don’t need a federal trademark, in which case you should still contact a trademark attorney to discuss the possibility of a state trademark. Even without registration you have certain rights to your trademark, but registration has a number of important advantages you should talk over with your attorney.
If you're not willing to protect your brand, there isn't much point of trying to build one.
Oct232009 | Steve O'Donnell
Benefits of a Registered Trademark
It’s often said that trademark rights come from the use of the trademark, and while that is true, there are strong incentives to registering your trademark.
If a trademark is registered there is constructive notice nationwide of the existence of the mark, meaning that if someone starts using the same or confusingly similar mark, they won’t be able to claim ignorance of the registration. It also gives the owner priority across the nation to use the mark, so even if the owner is only using the mark in one area of the country, the owner’s rights extend nationwide so the business can expand without concern that the mark is already in use somewhere else.
It’s evidence of ownership of the mark. Issues of ownership often come up when businesses come apart and a departing party claims ownership of a mark. Another area where this comes up is bands. The names “Pink Floyd” and “The Talking Heads” have been the subject of such problems when ownership of the name isn’t entirely clear.
The owner of a registered mark is able to bring an infringement action in federal court and may be awarded triple damages, profits, costs and attorney fees.
If a mark is registered in the US, that registration can be used as the basis for obtaining registration in other countries.
The registration may be filed with US Customs to prevent the importation of goods bearing an infringing mark.
A trademark is an intangible asset of the business’ balance sheet and can be sold, transferred, etc, like other property.
Once a trademark is registered, the ® symbol can be used to indicate to others that the mark is registered and that the owner will defend it.
Five years after registration the mark may be made incontestable, meaning that certainly aspects of the registration cannot be attacked by third parties. Generally, an incontestable trademark is immune to attacks that it is invalid or should not have been registered. Incontestability is not absolute, the mark can still be at risk if fraud was used to obtain it or if it has become a generic term.
One advantage that many don’t consider is that by registering a trademark you’ve essentially cleared it, meaning that the trademark office has looked at similar marks and determined that your mark is not deceptively close to someone else’s. It is still possible that a court might disagree, but obtaining registration is as certain as you can get that you won’t have any problems going forward with your business name or mark.
Ideally, you should speak with a trademark attorney when deciding on the name for your business so that he can check if there is already a business using that name. In reality, that doesn’t usually happen unless the principals of the new business have been burned by a trademark problem in the past. Similarly, you should have your trademark attorney check before you begin using a logo or other way of marking your business identity. Failing to do so can be an expensive problem to fix.
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- Avoiding Trademark issues when naming your band
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