Trademark Infringement

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Clearing Your Brand: A Cautionary Tale

March 20, 2010 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. Originally published June 19, 2009.

Update: unfortunately, Advanta’s efforts to protect its brand couldn’t prevent it from going on the FDIC’s failed bank list.

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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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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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