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.”
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

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.)

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.

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 lawyer 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 identify 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.

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.

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.

A court will find infringement if the use of a trademark is likely to cause confusion among consumers about the source of the goods. In other words, are buyers visiting cafepress.com likely to think that the Obey Steeler Baby merchandise is made by Shepard Fairey?  My first impression is that no, most buyers of the Steeler Baby merchandise believe that it comes from a Steelers fan and probably haven’t even heard of Shepard Fairey or his Obey clothing line.  Courts fortunately engage in a more rigorous analysis than this and apply a multi-factor likelihood of confusion test to find infringing use of a mark.  The factors vary depending on which circuit the case is heard.  In the Ninth Circuit (which includes the western states), the test is the Sleekcraft eight factor test and no one factor is conclusive of infringement.  The factors include:

1. The strength of the mark: an arbitrary mark such as Apple for computers or a fanciful mark like Adidas for shoes will get the strongest protection, but a suggestive mark such as Gleem for toothpaste won’t get as much protection, and a descriptive mark like International Business Machines for computers will get even less.
2. Proximity of goods: the more similar the goods, the more likely consumers will be confused about the origin of the goods.
3. Similarity of the marks: if the mark looks, sounds or means the same thing, the similarity could confuse consumers.  However, the context of the marks can be taken into account here.
4. Evidence of actual confusion: proving actual confusion can be difficult, but it can be persuasive.  This factor is not dispositive, however.
5. Marketing channels: if the goods are sold in the same store, or advertised in the same publications, the public is more likely to be confused.
6. Purchaser care: if a good is expensive, then purchasers will take greater care and research the product more before buying and will probably be less likely to be confused.
7. Intent: if the alleged infringer purposely used the mark to take advantage of the trademark owner’s goodwill, then that is pretty strong evidence that the purpose of the mark was to deceive customers.
8. Likelihood of expansion: if there is a strong possibility that either party will expand its business to compete with the other, than that supports a case for infringement.

It looks like Fairey considered only one factor of the likelihood of confusion test by stating that any product with OBEY is off limits, and has ignored the context of the Steeler Baby products, which concerns fan interest in the Pittsburgh Steelers.   The overall impression of Steeler Baby, including using the Kewpie Doll, the typeface and the color scheme, creates distinctiveness separate from Obey Giant Art merchandise.  And as far as I know, Obey Giant Art doesn’t make dolls.  The marketing channels aren’t similar either.  Steeler Baby is sold on cafepress.com, which is a website where individuals can produce and sell small batches of merchandise, but Obey clothing is sold on the company’s own website and in retail outlets.  Also, it doesn’t seem that likely that Fairey is going to enter the sports fan merchandise market.

Werner says that he didn’t intend to use Fairey’s trademark, but as a graphic designer he must have known about the famous-among-designers Fairey and his Obey designs and products.  The goods in dispute here aren’t expensive and buyers probably won’t put a lot of effort in researching this kind of purchase.  But overall, the case is not clear cut in favor of infringement and Werner would have strong arguments to support his case if he were to challenge Obey Giant Art.

Interestingly, if you go to cafepress.com you won’t find Steeler Baby anymore, but you will find products with the word Obey that appear to be more similar to the Fairey trademark than the Steeler Baby use.  A lot of the products are political and perhaps Obey Giant Art felt that trying to shut down political expression was going too far.  But there is plenty of merchandise that isn’t political and you can see why the company may be concerned about the cumulative use of the mark by all of these small producers.  Fairey has put a lot of hard work into his Obey products and brand, and he deserves the right to protect them, but Fairey does not have the right to exclude the use of the word Obey in all circumstances.

In cases like this, where the chances of consumers being confused aren’t highly likely, the optics for Fairey aren’t great.   In many circumstances, people are sympathetic when they see someone acting opportunistically and trying to free-ride on the hard work of others, but I don’t think that’s the case here.   When your brand is built on a history of anti-authoritarianism and free-culture, the public relations hit doesn’t seem worth it.

Update: apparently Shepard Fairey heard about the takedown notice and rescinded it.  Steelerbaby is now back on cafepress.com.