Last Names as Trademarks

July 14, 2009 in Registration, Trademark | Comments closed

Can you get trademark registration for a surname? The answer is no. There are exceptions. The rule is that the trademark examiner will refuse an application for word marks that are “primarily merely a surname.” That’s language that only a lawyer could love. But what “primarily merely a surname” means is that if a trademark registration applicant can demonstrate that a surname has a meaning or significance greater than its sound and look as a surname, the surname may be registrable. The trademark examiner will consider a number of questions about the mark to determine if the applied for mark is “primarily merely a surname”:

  1. Is the surname rare? These days at the Patent & Trademark Office (PTO), we’re talking very rare–like a steak that has been kissed by heat for just a few seconds. Recently, an examiner found 300 instances of the surname MERIWETHER, which was not considered rare. But for the name YELEY, the PTO considered 147 instances of that name in a national directory rare.
  2. Is the mark the applicant’s1 last name? Obviously, if the proposed mark is your own last name, this is strong evidence that the mark is “primarily merely a surname.”Portland Trail Blazer Travis Outlaw
  3. Does the mark have any commonly recognized meaning besides that of a surname? Marks like KNIGHT, OUTLAW or LOVE could be considered by the PTO as having a non-surname meaning. For the mark J.J. YELEY, the PTO concluded that the mark had significance as an identifier for the race car driver and not as a surname.
  4. Does the mark look and sound like a mark?2 If the applicant can convincingly argue that the mark sounds and looks like something other than a surname, then the mark may be OK for registration.

With any multi-factor test, the determination can be subjective. The bottom line is that registering surnames can be challenging, so be prepared for a surname application to be refused by the PTO.

Why does this rule exist? Many people may share a last name and it was not considered desirable to take away someone’s right to use their surname for commercial activities by having granted an exclusive trademark right to someone else. (Photo of Travis Outlaw by Keith Allison used under a Creative Commons license.)

  1. Actually, anyone with the last name connected with the applicant [↩]
  2. Yes, this is an awful lot like the quacks like a duck, swims like a duck, looks like a duck, it must be a duck inductive reasoning test [↩]

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It Was a Dark n’ Stormy Mark

July 5, 2009 in Trademark | Comments closed

DARK N' STORMYThe New York Times reports on Gosling’s registered trademarks for the trendy cocktail drink DARK N’ STORMY, which is two ounces Gosling’s Black Seal rum topped off with some ginger ale.  The article also says that the registration certificates dictate the precise ingredients and amounts. The article raises some interesting issues:

  1. According to the registration certificates, Gosling’s has a trademark registration for the mark DARK N’ STORMY for use with Gosling’s Black Seal rum and ginger ale, a pre-mixed alcoholic drink featuring rum and ginger beer, and clothing merchandise.  Gosling does not have the right to prevent a bartender from making a drink featuring rum and ginger ale together, but can assert a right for that drink to not be named a DARK N’ STORMY on the menu without using Gosling’s Black Seal rum. What if a patron asks for a DARK N’ STORMY and is then served with a non-Gosling’s dark rum and ginger ale drink? The safe bet is to respond that the bar doesn’t have Gosling’s and thus can’t serve a DARK N’ STORMY, but can make a dark rum and ginger ale drink.
  2. Contrary to what the Times article says, the registration certificates do not mention ingredient amounts, proportions or any requirement that other ingredients must be excluded.  Presumably, Gosling is asserting an implied, non-exclusive license for restaurants and bars using the mark DARK N’ STORMY, and that a condition of the license is that the drink adhere to the proper recipe.
  3. A bartender interviewed in the article remarks that she didn’t know about the trademark and proposes as a solution to her using a splash of lime juice (a lime wedge is allowed, but not juice) to print on the menu an ampersand as a replacement for the “n’”. That’s not going to work. It won’t pass the sight, sound and meaning analysis used to determine the similarity of a mark as part of a likelihood of confusion test.
  4. Gosling does not have the right to stop the Bulwer-Lytton Dark and Stormy Night fiction contest. And speaking of the Bulwar-Lytton contest, I like this Runner-Up entry in the Fantasy Fiction category by Andrew Manoske of Foster City, California: “Towards the dragon’s lair the fellowship marched — a noble human prince, a fair elf, a surly dwarf, and a disheveled copyright attorney who was frantically trying to find a way to differentiate this story from ‘Lord of the Rings.’”

(Dark n’ Stormy image by star5112 used under a Creative Commons license.)

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Clearing Your Brand: A Cautionary Tale

June 19, 2009 in Clearance, Trademark Infringement | Comments closed

A credit union in Billings, Montana was forced to change its name of Avanta Federal Credit Union to Altana Federal Union.  When choosing its name, the credit union only checked with the state of Montana and the National Credit Union Association, but failed to obtain an opinion from a trademark attorney regarding the availability of the name.  As a consequence, the credit union must spend about $80,000 to change all its stationary and signs after Advanta Bank in Utah objected to the similarly sounding and spelled mark.

The Gazette article notes that Avanta and Advanta are “neological” names.  While it’s true that coined or fanciful marks can be good choices for trademarks, both of these appear to be closely derivative of the word ‘advantage’.  Chances are if you’ve thought of a form of ‘advantage’, so has someone else, which increases the chances that your new brand may be infringing a prior trademark use.

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Facebook Domain Names

June 18, 2009 in Trademark | Comments closed

The New York Times reports on the some of the problems trademark owners may be having with Facebook’s new customized domain names.  If your Facebook domain name is taken, you’re welcome to the almost as valuable and useful Known in the Marts customized domain name.

Barbie & the First Sale Doctrine

June 16, 2009 in Trademark | Comments closed

Barbie Cake by PSDProfessor Irene Calboli has a great post about her experience in a bakery pondering the intellectual property implications of a Barbie Cake. (Barbie Cake by psd used under a Creative Commons license.)

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Track Town

May 23, 2009 in Registration, Trademark

The Register-Guard reports on efforts by the University of Oregon in Eugene to obtain federal trademark registration for TRACK TOWN.

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Verbing Trademark

May 9, 2009 in Registration, Trademark | Comments closed

The New York Times has a blog entry in Gadgetwise about designing a logo.  The advice appears to be sound except for the following item:

SCOPE OUT THE COMPETITION
This is important for at least two reasons. One, you don’t want to be on the receiving end of a trademark suit. (You should also trademark your logo.) And two, you want your logo to be distinguishable from those of similar businesses. Your logo should be exactly that: yours. Of course, some companies choose to piggyback off the success of their competitors by creating similar logos, but it’s better to branch off. You should not, however, shy away from adopting elements you like. Just make yours better.

Chances are if you talk to your trademark attorney and tell him or her that you want to trademark your logo, you’ll have to endure a brief lecture about how the word “trademark” is not a verb.  The lawyadidas1er doesn’t do this to be a scold or to sound officious, but does it to help explain what exactly a trademark is.  A trademark or a service mark is a word, a graphic or a symbol that identifies the source of a product or service as separate from other sources.  A product has trademark protection once that product is delivered or used in the marketplace and consumers associate a identifying mark with that product.  It’s the use of a logo that confers trademark status, not the legal registration process.  For example, if you’re starting a sneaker company and you decide to put three vertical stripes on the sneakers to adidas-comptownidentify them as coming from your company and not Converse, the logo is not a trademark until the shoes are sold and customers recognize the stripes on the shoes as coming from Adidas.  Registering the logo, either at the state level or federally, provides additional enforcement benefits, but the registration alone doesn’t make the logo a trademark.  That’s why a logo or other mark may have the symbol ™ for unregistered trademarks or ® for registered trademarks.  Neither confer trademark status, but the trademark symbols are notification that the logo is a trademark.

So if you want to skip the lecture, ask your lawyer instead if the logo can function as a trademark, whether it’s federally registerable, or if it’s available.


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Zillow

May 1, 2009 in Trademark, Trademark Infringement | Comments closed

Sometimes what’s newsworthy about trademark law are instances of ovezealous trademark enforcement efforts, misunderstandings of trademark law, or cases where the issue of infringement is a close call.  Sometimes, though, you find clear instances of trademark infringement, as in the case of Zillow trying to enforce its trademark rights against iZillow.net.  It has everything you need for trademark infringement: a strong mark, in this case the coined term Zillow; the same mark being used, such as iZillow; and a competing product, which is an iPhone app for home valuations.

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Self-inflicted genericide?

April 30, 2009 in Trademark | Comments closed

30fitness2-190The New York Times has an article on the development of Ultimate, commonly known as Ultimate Frisbee, as a mainstream sport.  However, the article uses the term Ultimate Frisbee and Ultimate interchangeably.  When I checked the Frisbee website, I discovered that the company Frisbee uses the term Ultimate Frisbee, which is an interesting choice for a company that has historically struggled with its brand being a generic term for flying discs.  Even though trademark lawyers advise their clients to adopt and maintain a vigorous policy for preventing genericide, Frisbee’s marketing people must feel that there are competing benefits of having very popular and fast-growing disc sports associated with it brand (there is also the popular game Frisbee golf, or disc golf).  Perhaps the company believes that it can both promote the sport as Ultimate Frisbee and continue enforcement efforts against competitors using the trademark. On the other hand, the governing body for the sport uses the term Ultimate. The Ultimate Players Association most likely has an interest in using the generic term “disc” and requiring Frisbee to pay for the privilege of having its brand associated with the sport (the official disc of the UPA Championship Series is not a Frisbee disc, it’s a Discraft disc).

For those unfamiliar with genericide, a company can lose its trademark if its trademark becomes generic.  This can happen if a trademark becomes the actual name for a product, such as the former trademark “Escalator” becoming the term for a moving staircase.  Once this happens, the trademark no longer functions as an indicator that the underlying product is associated with a particular company, which causes the trademark owner to lose its its ability to prevent competitors from using its mark.  A company with real dominance in the marketplace has to go to great lengths to remind and persuade people to use its trademark as an adjective, and not as a noun or verb.  In this case, if Frisbee was concerned about genericide, it would be vigilant about the use of Frisbee as a noun and insist that the term Frisbee disc, or Frisbee® disc, be used.  Such efforts usually include writing to dictionaries, media outlets and also enforcing correct usage within the company.  It’ll be interesting to see if either Frisbee or the Ultimate Players Association write to the Times asking for a correction.


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Trademark Infringement: Obey Shepard Fairey?

March 12, 2009 in Trademark, Trademark Infringement | Comments closed

obey-steeler-baby

Shepard Fairey’s company, Obey Giant Art, has sent a cease and desist letter to Pittsburgh graphic designer Larkin Werner asserting that the use of OBEY in connection with Werner’s Steeler Baby and Steeler Baby Kewpie Doll merchandise is trademark infringement.  Fairey has received criticism for this, mostly accusations of hypocrisy because he had to stop using “Andre the Giant Has a Posse” after getting legal threats from the wrestling association that owned the rights to that name, not to mention his Obama poster dispute with the Associated Press.  Fairey has also been attacked for his liberal use of artwork and graphic design without attribution.  However, what interests me is the assertion by Fairey’s business partner that all they’re trying to do is protect their trademark.  And someone else in Fairey’s company claims that “[a]nything with ‘Obey’ on it they can’t have.”  So, is this true?  Is Fairey obligated to go after all uses of the word “Obey” in connection with merchandise?

The short answer is “no.”  Shepard Fairey has a federally registered trademark for the word word OBEY in connection with stickers, poster, handbags, wallets and clothing.  This federally registered trademark gives Obey Giant Art the ability to go after infringers of its mark nationally.  And a tenet of trademark law is that the trademark owner has to take reasonable steps to police its mark.  If the use of the mark by others spreads, then the function of the trademark, which is to indicate the source of the product, diminishes.   However, owning a trademark that includes a particular word does not confer an exclusive right to that word for all commercial uses.

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