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Steve O'Donnell, Ph.D. Registered Patent Attorney

Using brand names in your work

Some variation of this question comes up at least once a month:

Q: Hey Steve, I'm writing a book and one of the characters likes SpongeBob SquarePants, will I get sued for mentioning SpongeBob?

A: Probably not. You see, trademarks are meant to identify the source of goods or service to assure purchasers of some level of quality. So, you know if you buy a stuffed SpongeBob it won't be filled with tarantula eggs, or if you buy a SpongeBob children's book that it won't be the story of Squidward's suicide. At least, you really wouldn't expect either from Nickelodeon. So, when someone uses a trademark in a non-trademarky way, i.e., in a way that doesn't indicate the source of goods or services (like mentioning SpongeBob in passing in a book or having a character in a film drink a Coca Cola) the First Amendment comes into play and we have to determine which one beats the other (hint: it's real hard to beat the First Amendment).

The big case on this is Rogers v. Grimaldi, which established that use of a celebrity's name in the title of a creative work was trademark infringement only if the use had no artistic relevance to the underlying work or it explicitly misleads people into thinking there's some official endorsement of the work. Courts have slightly expanded the holding of Rogers and use its reasoning, over and over, to determine if the use of a trademark within a creative work is protected by the First Amendment.

The first prong of the Rogers' test, that there must be at least some artistic reason to use the trademark, is a very low threshold. Like, crazy low. Use of the Louis Vuitton mark passed the test because it pointed out that a character was the kind of twit who would pay Louis Vuitton prices without being able to pronounce the name (The Hangover Part II). A "morale" patch of an angry monkey was ok to use in Call of Duty: Ghosts because that's the kind of thing a real-lite, near-future soldier might wear, even if wearing such a patch on a military uniform or in an official context isn't allowed.

The second prong is maybe even easier to pass than the first, and really, you'd have to try to satisfy it. In the Hangover case it might be satisfied if the name Louis Vuitton was prominently displayed on the movie poster, or maybe if its use was so pervasive during the movie that you'd walk out thinking "whoa, what did Louis Vuitton pay for all that advertising?" To get an idea of what pervasive use looks like, rent Superman II; Marlboro paid $43k to have their logo show up 22 times in the movie. Twenty-two times! I remember watching that as a kid and thinking it looked weird.

So, if you're going to mention SpongeBob in your book, make sure there's at least some reason for it and maybe not use "SpongeBob" as part of the title.

Does that mean you won't get sued. Hell no. There's a lot of caselaw on this, which means a lot of people sue over these kinds of things, but it lessens your chance of getting sued and puts you in a better position if you do get sued. Be smart.

No reading of the law gives you free rein to do whatever you want though. For example, if instead of having a character in your book mention SpongeBob, you have him sing the whole theme song (reproducing they lyrics) and include pictures of SpongeBob, then you're moving from a trademark issue into copyright law, which is a whole other gnarly beast. Also, if you are using the name of a real person, even if that person is dead, you could be running into rights of publicity as well as defamation. So, don't do that.

To protect yourself, even if you think you're ok, it's a good idea to have an attorney review what you're doing and evaluate the risks….because there are always risks.

The On-Sale Bar is back baby.

Back in the olden days, when things were more sepia-colored, there was a rule in patent law that gave inventors one-year after their invention was on sale to get to the patent office. If they didn’t get something filed by then, they were barred from getting a patent.

So, if I invent a widget in March, sell one at a farmer’s market in April, and wait 13 months before filing a patent application, I can’t get a patent because I waited too long. This let people test the market and see if their widget would sell before investing in a patent application, but prevented them from capitalizing on sales and never filing a patent application until they had competitors.

Then, there was the America Invents Act in 2011.

The AIA has some really good stuff, but like anything made by people it has some imperfections. One of these imperfections was in how it defined prior art and disclosures, which now seemed to say that secret sales and uses didn’t start the one-year race to the patent office.

A person shall be entitled to a patent unless …the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.

That or otherwise available to the public is the interesting part. Lawyers will read that as meaning that all the preceding conditions are necessarily also available to the public. So, it follows that if a sale isn’t public, it’s not a “sale” as far as the statute goes, and doesn’t interfere with patentability.

If that’s true, in theory at least, an inventor could sell their invention as long as they want as long at the sale isn’t offered to the public. That could be secretive, dark alley sales, or it could just be products that aren’t offered to the general public.

Crazy right?

Not really, the US Patent and Trademark Office thought that was the case. The manual of patent examination procedure states:

The phrase “on sale” in AIA 35 U.S.C. 102(a)(1) is treated as having the same meaning as “on sale” in pre-AIA 35 U.S.C. 102(b), except that the sale must make the invention available to the public.

So, for the last few years some people have been working under the assumption that they could sell their widgets privately, and maybe even sell their stuff in a way that didn’t make the invention “public” like a secret recipe, and still be able to get a patent on their invention if they ever decided to sell publicly or if their trade secret became known.

That’s changing.

Today the Federal Circuit Court clarified in Helsinn Healthcare v. Teva Pharm. that Congress "evidently meant that the public sale itself would put the patented product in the hands of the public," and not that only sales which make all the details of the invention public are “public sales.”

The case was whether a public sale is public, even if the details of the invention aren’t publicly disclosed. So, in other words, selling my famous chili can keep me from patenting the recipe, even if I never tell people my secret ingredient (it’s cinnamon).

The court, as they usually do, didn’t go further than they absolutely needed to and didn’t clarify other outstanding questions about the new on sale bar, but I’m taking this as an indication that we should think of the new on sale bar as the same as the old on sale bar. At least until the courts tell us otherwise.

So, bottom line is that you should get on file before you take the invention out of your garage and someone sees it. That’s not always possible, but try. Problems creep up when you start involving anyone that isn’t you or your co-inventors.

Led Zeppelin’s Stairway to Heaven doesn’t infringe Spirit’s Taurus.

I’m sure we’ll hear more about this in the next few days.

It is a pretty similar riff, and I can’t see how anyone could say otherwise…but that doesn’t mean it was stolen.

Is Kickstarter a use in commerce for a trademark application

Often a new inventor will ask me about raising funds to get their idea off the ground and sometimes I have them look at Kickstarter. If things go well, it’s a great way of generating some buzz and raising money to get a product into production.

I’ve picked up some pretty cool stuff from Kickstarter… a few packs of Cthulhu playing cards, a vegan cookbook, a multi-charging station that one of the kids smashed, and I’ve tried funding a few things that fizzled out. It’s fun. Take a look at it.

If you want to use Kickstarter to raise money for an invention, you’ll want to talk to a patent attorney first to make sure you don’t endanger your patent rights. Certain public disclosures and come back to haunt you if you’re not prepared.

More commonly though, at least for me, is when someone is getting ready to launch a campaign and want to protect the name of their product with a trademark.

In order to get a federal trademark you have to be using the mark in connection with your product “in commerce.” That means that the mark isn’t just in use, but it’s been used in such a way that crosses state-lines. You see, that action is needed to bring it under control of the federal government through the Constitution’s Commerce Clause. According to the statute, a mark on goods are “in commerce” when:

(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and

(B) the goods are sold or transported in commerce,

The first part, using with the product is easy to understand. If your product is a spiral cutter to make your own curly fries and zoodles (zucchini noodles) at home, and your product name is Quirky Curlies, then slapping the name on the box or the cutter is a proper use. If you don’t have the product ready, so you print the name on t-shirts to try to secure rights to the name, that’s probably not going to cut it.

The second part is a little trickier. Something is sold when an order is placed and presumably paid. Something is transported in commerce when it crosses state-lines. For Kickstarter then, is a pledge a sale, or is it not a sale until the project is fully funded, or if it’s not a sale, does shipping the product across state-lines qualify as a “use in commerce?”

It would probably depend on the specific facts. Some projects are really there to raise the money needed to prototype and get a product made. Others use Kickstarter as more of a sales outlet. If a product is ready to ship, then pledging might be a sale since it’s essentially a done deal, although even then the seller could back out if the project doesn’t get fully funded. I think it’s clear that a product paid for thought Kickstarter and sent across state-lines would satisfy the requirements, but by that time the seller could have someone else copy their product name, and maybe even beat them to registration.

The solution to the problem doesn’t rely on tricks or clever arguments, but is simply to file an “intent to use” application. In that, you lay claim to a trademark even though you’re not using it yet. Essentially, it buys you some time to get the necessary sales accomplished. Then, when the product is shipping and we get a tentative allowance from the trademark examiner, we update the file, the mark issues, and Quirky Curlies becomes a beloved brand name and future sponsor of a college bowl game and I get free tickets for life as your cherished trademark counsel!

Choosing a brandmane

So, you’ve got a product or two, and you’re ready to launch...but what will be your brand name?

Often people try to choose something explanatory as their brand name; perhaps something like “The Roto-Fork” for a spinning fork that twirls your spaghetti for you.

That’s not a bad name, but say you’re selling this fork and it’s a huge hit when you get an idea for another product, this one is a spoon designed so the bowl stays horizontal making it harder to spill soup. How do you sell this? You can’t use the name Roto-Fork with it for obvious reasons, but you want people to recognize that the new product has the same high quality as the old product...and you want your established customers to try out the new spoon. Since you didn’t plan out a great brand, you’re stuck. You can try to use the same basic package design, and advertise them together, which will help, but isn’t the best solution. What if another few years go by, and you design a steak knife with a moving edge (like a small chainsaw). To get this product established, you’ll have to go through the process all over of trying to link the products in people’s minds, and there will still be some people that won’t appreciate that the products are all from the same company.

Now, if you have started with a brand name that wasn’t as explanatory, you’d be in a better position.

Say you called the brand “Complete Cutlery Solutions.” You could still call your fork the Roto-Fork, but people learn to connect the brand and the product name together. Then, when you debut the spoon and knife, you market them under the Complete Cutlery Solutions brand so people associate the new product with the brand recognition they have from the Roto-Fork.

Now, if next, you design a specially adapted plate with movable wells so you can keep all your foods separate from each other, and resize the compartments as you want. Complete Cutlery Solutions doesn’t work so well for that. But, if instead of that, you chose and even less explanatory brand...maybe “Blue Table”’d have something that still sounds somewhat food-related, but vague enough to sell just about anything you could find in a kitchen.

There’s nothing to stop you from using nesting trademarks: one for the parent company, one for each brand owned by the company, and more for each product sold by the brand.

Large food companies do a great job of branding because they have to. Is there really such a huge difference between premium priced tortilla chips and store brand tortilla chips? Is the difference enough to justify the price of brand name? Maybe, maybe not, but the companies do such a great job of branding that you might not even think of getting an off-brand. I can’t imagine anyone yelling at their spouse to pick up “sour cream ranch flavored tortilla chips," but yelling “get Cool Ranch Dortitos” feels as natural as falling in love.

Continuing the Doritos example. The company is Frito Lay and their logo is emblazoned on the packages. That creates a connection between all Frito Lay products. If you like Cheetos and think they’re high quality, then there’s a good chance you’ll also like Doritos, or Lays, or Sun Chips. Also, if you like regular Cheetos, there’s a chance that you’ll also appreciate other Cheetos like the Flaming Hot ones or Cheetos Fantastix.

You want a brand name that will make sense with everything you can reasonably consider selling, not just your first product.