Is Your Karaoke Host Subjecting You To Trademark Infringement Litigation?

Do you run a bar, restaurant or other venue that provides entertainment in the form of karaoke? Do you know if your karaoke host is running a legal show? Do you know how to tell the difference? Do you care?

Computers have aided to the ability to make our lives better. They help you in your business. They also help the karaoke Jockey (KJ for short) to run a show that doesn’t require him/her to lug thousands of discs around to every show. With the advent of the computer age, the KJ can now carry all those songs in a case the size of an 8 lb. computer. He can find any song by typing part of the title or artist name, keep track of the songs for each singer, keep the rotation of singers in order, and print books for singers to select their songs. But along with the convenience comes the opportunity to do things that may not be on the up and up. And that can expose you to lawsuits for copyright and trademark infringement.

The manufacturers of quality karaoke music have waged war on those that have decided they can download songs and run shows without paying for them. They are after those that are putting all that music on hard drives and selling them for a few hundred bucks. And they are after you if you know about it and even if you don’t and should.

Investigators are on the move and showing up at clubs like yours. They are documenting the use of hard drives and computer by KJ’s, even the legal ones. That’s because they want to find out if each of those shows has a set of manufactured discs that were bought and paid for backing up all that music.

If you know that they are doing this or you don’t (and are in a position that you should), you may still be subject to litigation. Even if you don’t actually have to go to trial, you will be subjected to the inconvenience of responding and you may feel the need to consult legal council to put it behind you. Your KJ will have to prove he has a disc for every song on the computer. And if you know that he’s doing it, you could also be guilty by hiring him. Copyright violations can carry penalties up to $150,000 per song and trademark infringement carries penalties up to $2,000,000 per incident. And paying your BMI or ASCAP fees may not protect you.

There are things you can do to make sure you protect yourself from the debatable tactics of the karaoke manufacturers spearheading this effort. Their motives, while admirable, are being questioned by the very people that have been paying their salaries for many years. Many legal KJ’s – the ones that have paid for all their music – are up in arms saying they are being targeted right along with the Karaoke Pirates. They are guilty and have to prove their innocence and are having to retain council to answer for unfounded charges.

While you can register with the manufacturers or the associations and require your KJ’s to register and subject themselves to audit, you may find yourself looking for a legal KJ that will not mind going through the headaches for what you’re willing to pay. But there is something you can do to protect yourself and your investment.

ASK! If your KJ uses a computer and/or does not carry discs with him, Ask where the music came from to run his show. Most Pirates will be more than happy to tell you how they downloaded it all for free. A legal KJ will be happy to show you his library to keep the gig. You may have to go to his house or place of business, but most will be happy to conform. If they are not willing, find another KJ. (The same would be true with a DJ).

Resign yourself to only hire those that are conforming to the law. You pay your BMI/ASCAP fees every year that protects you and them for the music that’s played in your establishment. They should be gracious enough to protect you from litigation by purchasing legal copies of their music.

Trademark Class – Which One to Pick?

Once you’ve picked a name to trademark the second step is describing the goods and services for the trademark. This can be a difficult process for someone inexperienced with trademarks. However, here are some quick tips to remember (and a really good resource!).

First, trademarks are registered for particular things. To take an example, Apple is registered for “computers” (amongst other things) and “iPhone” is registered for “mobile telephones.” What you register your trademark for will limit your legal rights. For example, the same trademark can be registered by different people provided it’s for different goods and services. Trademarks being focused on preventing confusion in the market, it’s unlikely that a company making, say, “t-shirts” would be confused with a company providing “legal services”. Obviously there is lots of room for interpretation here!

Second, all goods and services are divided into 45 different classes. Most countries in the world use the same forty five classes. The first thirty four classes relate to goods while the remainder relate to services.

Third, each class relates to a group of things, not just one particular thing. For example, class twenty five relates to clothing, footwear and headgear. Some class groupings are not as logical – for example alcoholic beverages are in class thirty three, while beer is in thirty two. Obviously there are some political and social reasons behind some of the groupings. Also, having the groupings means that it’s easy to search for similar marks – a very simplified search strategy might look for all similar marks in classes that have similar goods and services to your own.

Fourth – and this is one of the most common mistakes – if you operate a retail store selling third party goods, you’re in class thirty five. Some people make the mistake of trying to register the trademark in each of the classes of the goods they sell, when in fact they are selling goods from someone else and their trademark is being used for retail sale.

Finally, the descriptions of good and services should cover your use and intended use of the trademark – no more or less. The descriptions should be plain language and easy to understand, without any jargon.

Why To File a Trademark Opposition: Understanding the Differences Between the TTAB and Court

One who believes she will be damaged by a registration can file a trademark opposition with the Trademark Trial and Appeal Board (TTAB) of the USPTO. This must be done within the 30-day Opposition Period, although extensions can be sought. Before doing so, it is important to recognize the differences between a TTAB proceeding and litigation in a federal district court.

  1. Although a TTAB proceeding can take less time, oftentimes less than a year, and cost less than litigation, they both are adversarial processes that require an understanding of the Federal Rules of Civil Procedure and trademark law.
  2. A TTAB proceeding is typically easier to file and to dismiss than a court action, without the risk of a requirement of consent or payment of costs and/or fees.
  3. A trademark opposition is filed with the TTAB with any appeal going to the Court of Appeals for the Federal Circuit. This is the only way to be heard by the Court of Appeals for the Federal Circuit, which contains the most precedent related to TTAB matters. Any appeal from a decision in a federal district court will go to the controlling Court of Appeals (e.g. Sixth Circuit Court of Appeals).
  4. While a favorable TTAB ruling in a trademark opposition will preclude the application from becoming a registered trademark, that ruling is not necessarily binding on a federal district court. Moreover, only a court of law can order injunctive or financial relief (i.e. stop the infringing use or award damages).
  5. Leverage in a TTAB proceeding is limited to a petition to cancel the trademark registration relied upon, if any, as part of the opposition. In a federal court action, various counterclaims are available that would make the originally named defendant a plaintiff. In addition, additional third parties could become part of the litigation.

As you can see, there are numerous considerations that have to be made in choosing a TTAB trademark proceeding rather than litigation.

Checklist For A Car Accident

Getting in a car accident can be frightening. Even when no one is seriously injured, the jolt of the accident can put your nerves on edge, give you an adrenaline rush, and even put you into shock. When this happens, it can be hard to remember what to do at the scene of an accident. But if you end up having to hire a personal injury or car accident lawyer to help you get compensation from the accident, you’ll want to make sure you have as much information as possible.

As soon as the accident happens, you should put on your emergency flashers so that other drivers know that they should go around you. Immediately afterward check to make sure that no one is seriously injured. Call for medical help if anyone is in trouble. Even if no one is injured you should immediately call the police. The best way to protect yourself in an accident is to make sure the police arrive and file a police report, which can be helpful information in insurance claims and lawsuits. The police will also assist with exchanging driver information. If you have a camera on your phone, take pictures of the accident. If it’s safe to do so, move your vehicles to the side of the road. If the police haven’t already had you do it, make sure to exchange information with the other driver including name, phone number, address, and insurance information. If you can, immediately write down all the details about the accident that you can remember. This information can be vital if a lawsuit is necessary.

Is a Company Name a Trademark?

A company name is not a trademark. A company name is a legal identity for a corporation which can separate legal personality, can own property, sue and be sued in its’ own name, has office bearers, members and enjoys perpetual succession. A company may choose to trade under a registered business name, or in some cases it may not conduct trade at all.

Every company is allocated a registration number and has certain ongoing filing and compliance requirements depending on the laws of the jurisdiction it operates in. The registration of a company name does not confer any proprietary rights upon the holder of a company name. Companies can frequently be involved in many trade activities which change over time.

As stated above, a company may register a business name which it trades under. Registration of a business name, like a company name, is a legal obligation and does not automatically grant a company, or a company doing business under a fictitious name, a right to use that particular business or company name as a trademark.

The relationship between these different identifiers, namely trademarks, company and business names has generated a lot of confusion. Many businesses have misconceived the nature of the rights which attach to each identifier and have failed to comprehend the interface between them. This is because many traders don’t fully comprehend the inherent legal nature and purpose of each identifier and the differences between them. This can lead to unanticipated litigation and commercial uncertainty. A business name cannot be registered if it is identical to a registered company name, or is a name which is identical to, or closely resembles an existing registered business name, where the public would be likely to be mislead if business were carried on under both names.

Automated software is sometimes employed by some jurisdictions to apply the above criteria however there is still a large reliance upon human skill and judgement in interrogating databases to detect potentially conflicting names.

It is essential that traders understand that business names are registered out of a sense of legal obligation, their purpose being to provide a mechanism to ensure consumers and traders are able to identify the entity behind a trading name or firm. This promotes accountability. However, a business name is also capable of functioning as a trademark under certain circumstances. It can function as a trademark where it serves as more than just a business or company name and informs consumers of the origin or source of a product or service.

Registered businesses can also be registered as registered trademarks provided they meet the normal criteria for registration. The only assurance that can be gained by a properly executed search of a business names register is that a registrant is apprised that there are no prior or subsequently registered business names in the jurisdiction in which the search was conducted with a confusingly similar trading name.

However this won’t afford the registered business owner protection against similar prior registered trademarks, similar subsequently registered company names, and common law rights to similar names such as trademarks or unregistered trading names.

There has been a widespread misconception that a registered business name or a company name confers a proprietary right upon the owner. This had led businesses to assume, erroneously, that a registered business or company name will confer both immunity upon them from trademark infringement proceedings and exclusivity in respect of rights to a particular name. This is not the function or purpose of a business and/or company name.

This has resulted in business and company name registrants (including company registrants doing business under registered business names) becoming aware that their business name infringes either a pre-existing common law or registered trademark only after making a significant investment in their business. The legal and marketing costs in terms of re-branding their identity are significant. There is also the possibility of a business or company being sued and having to pay compensation to either a domestic or foreign trademark owner.

Across the world there are a wide range of systems in different jurisdictions for the registration of business, company and trademark rights. Some countries offer greater safeguards against the possibility of a company and/or business name being registered which could potentially conflict with an existing trademark. Business and company names should only be registered where searches of the trademarks register reveal there is no conflict with either a pending or existing trademark in the same or similar field of business activity. Ideally searches should be undertaken beyond official trademark, business and company registration databases.

Where a business name registration is in existence at the time of the registration of a trademark this creates a presumption, which can be rebutted, that the name was in prior use for the purpose of establishing a defence to a later trademark infringement action. Owners who subsequently acquire trademarks bear the onus of establishing that a business name which appears to infringe a trademark hasn’t been used continuously in the course of trade on similar goods or services before the date of registration or first use, whichever date is earliest.

The misconceptions that a company name will give rise to a right of exclusivity over that name and confer immunity from a lawsuit against a trademark holder gives rise to a false sense of security by the owner of a company name. A person who registers a company name does so as they have elected to organise their business by incorporating it, which requires them to conform to various requirements under corporations law.

As stated above, often a company will choose to do business under a registered business name rather than adopt their company name. On other occasions a company may decide to use their company name as their trading name. The real problem however arises due to a lack of understanding of the purpose and function of company and business names compared with trademarks.

As with company and business names, many domain name registrants are under the misapprehension that they have property rights in a domain name registration. What traders fail to appreciate is that domain names are issued on a first come first served basis and that their domain name may be either identical or confusingly similar to a trademark owned by a third party. This could likewise expose them to potential trademark infringement actions either in the Courts or through the arbitration system for the resolution of domain name disputes where the trademark owner claiming rights in the domain name takes legal action.

A Domain Name only confers a revocable licence upon a person to use the name, not a property right. A Trademark on the other hand confers upon the owner an exclusive property right which can be used, assigned, licensed, mortgaged or bequeathed. There is also an assumption made by a domain name holder that the domain name registrar checks the name they register. In many cases domain name registrants, just like company and business name registrants, are unaware of the risks of trademark infringement and the need to conduct comprehensive searches before choosing a name.

The strongest misconceptions exist in the area of business and company names due to not understanding that these four distinct identifiers serve completely different purposes.

Only a Trademark will confer upon the owner a property right and exclusive rights to the use of a name. On the other hand the registration of a company name and a business name arises out of a legal obligation and doesn’t confer any entitlement as such. Registrants must comply with business name and company name legislation in order to lawfully conduct business. As a registrant is allocated the right to use a business name or company name after a search of the register is conducted, it is possible that they automatically assume that this confers ownership rights upon them and nobody can either use or take their name away from them.

Some countries with federal systems of Government have registration systems which are more fragmented than others which compounds the confusion. State business names are registered in Australia by states and territories, whilst company names are registered pursuant to federal law. In the US company names are registered through various State registries. This was also the case in Australia prior to the introduction of a national system of registration of company names in 1991. However, after the adoption of a national system in Australia in 1991 there was a lot of confusion as there were a number of companies in different state jurisdictions which had identical names.

For traders to understand the distinctions between company and/or business names, domain names and trade marks they must comprehend the nature and function of a trademark. A trademark is a sign which is used to.distinguish one traders goods and/or services from those of another trader. A trademark serves as a badge of origin or source identifier and informs the consumer of the origin of goods and/or services. There are two types of trademarks; common law and registered trademarks.

Both serve the purpose both of fostering goodwill associated with a business’ products and/or services, and protecting a consumer by informing them of the origin of goods and/or services. The advantage of owning a registered trademark for a trader is an evidentiary one. A registration gives the owner a right to enforce their trademark without having to prove reputation in the market in respect of the goods and/or services associated with the mark.

To be registered a trademark must be capable of distinguishing a trader’s goods and/or services from those of others in a particular field. It cannot be substantially identical with or deceptively similar to a trademark either registered or applied for by another person in respect of similar goods and/or services.

A company name is not a trademark, and a trader who registers a company name or a business name must conduct a search for trademark applications and registrations prior to registration. These kinds of searches have their limitations as they won’t uncover common law trademarks. However there are professional trademark clearance services which yield more comprehensive results.

As a company name and/or business name is not a registered trademark a person contemplating the registration of a name should conduct a thorough endeavour to search for all prior common law and registered trademarks both domestically and internationally.

As pointed out above just because a company name is not technically a Trademark this does not mean that either a company name and/or business name cannot eventually perform the function of a trademark. There is no one single place where a person can search for all conflicting business, company names, commercial names, brands and unregistered common law trademarks.

There is no guarantee a name has not already been adopted in trade or commerce by another business as a trademark without being registered. In most countries trademark law recognises the existence of rights in a name acquired through prior use. If there is some evidence that a trademark is in existence, whether by registration or prior use, extensive enquiries should be undertaken prior to bearing the risk of filing a trademark. Your enquiries may include whether the business is in the same industry, the same geographical location, has the same or similar marketing channels, sells the same or closely related products or services and sells to the same customer base. The critical thing you should be trying to establish is whether customers are likely to confuse your business with another business’ goods or services. If there is any overlap, you should be very cautious, as you are risking potential legal action, and devoting a lot of money, time and effort to building a brand, only to risk being sued and having to rebuild your business by starting all over again with a new name.

Another business within your industry which is already using the same name in the same geographic region as you will be likely to have superior rights to a name if it is using the name publicly even if it hasn’t officially applied for trademark registration. You may believe a business will be indifferent to what another business is doing in a remote region of the world. However since the advent of the internet, the concept of location has assumed a completely new meaning and trademarks are increasingly colliding with domain names. Instead of being linked to specific territories, businesses are now competing for a presence on a global stage. Vast numbers of businesses, even local enterprises have put up their own websites, creating a potential for competition, confusion and conflict in the marketplace.

There is a doctrine called honest concurrent use in some jurisdictions where two trademarks operating in the same sphere will be allowed to co-exist harmoniously, however this is a rare occurrence.

International trademark owners have also proven to have been quite aggressive in hauling companies into foreign courts particularly where their trademark is well known or famous, even where there is little likelihood of confusion arising from the use of their mark.

Because so much business is now being done online, most businesses will want to be able to use their proposed mark as a domain name so that their customers can easily find them on the Web.

A company name, in and of itself, cannot be trademarked, as it first needs to be associated with a specific product or service before it becomes a trademark. Upon registration a company can become a registered trademark in one or more of a number of internationally agreed upon classes of goods and/or services recognised under the Nice Classification system. Equally a Company may acquire common law trademark status by gaining a reputation in the minds of the consuming public with the provision of a particular product and/or service, so that it operates as more than just a company name.

This Article Is Brought To You By The Letter Blank

Most of the American public including most all entertainment lawyers, heard about one of Oprah Winfrey’s well-publicized litigations a number of years ago. My understanding was that she was sued in Texas by a commercial cattle-oriented conglomerate. The plaintiffs apparently claimed that Oprah had inaccurately and unfairly maligned the culinary safety of cow meat, during one of her television programs. The Texas case seemed vaguely surreal and comic, even from the perspective of an entertainment lawyer – sort of like an overly-imaginative law school exam question. But next we must go from the sublime to the ridiculous. This next case was an entertainment lawyer and trademark lawyer’s delight. Talk about the eradication of your sacred cows. The local press in New York reported that a German “fetish magazine” named “O” sued one of Oprah’s companies and her publisher, over the sale of Oprah’s magazine bearing the equally-expansive title of “O”. Query if it was really a service mark dispute as opposed to a trademark dispute.

Perhaps even more befuddling, from the entertainment lawyer or publishing lawyer perspective or otherwise, the German “fetish” magazine somehow derived its own title from the erotic novel “Story of O” – serving as even more of a reminder that there is truly nothing new under the sun. And if this were not bizarre enough, the local press reported that Oprah’s company and publisher were prepared to change the name of her magazine to “O, The Oprah Magazine”, in an apparent attempt to assuage the seething service mark or trademark plaintiff and make the distinction between the two magazines more apparent.

Coincidentally, this lawsuit received even more attention from trademark lawyers, entertainment lawyers, and others, than usual, since Lions Gate was slated to release a film called “O” around the same time the suit materialized. I understand the Lions Gate film was somehow loosely based upon Shakespeare’s “Othello”. The Bard himself referred to the Globe Theatre as “this wooden ‘O'”. Maybe if we find Shakespeare’s heirs – perhaps arguably incarnate in the Bacon Brothers – we can thereby locate the real plaintiff who has something to complain about?

But come on. All kidding aside, could this trademark (or service mark) lawsuit really be happening? Yes. Yes it could. But maybe it shouldn’t be allowed to happen. The minds of reasonable trademark lawyers, entertainment lawyers, and others, may differ.

Let’s back up a step. Generally speaking, as entertainment lawyers or trademark lawyers will advise, one acquires trademark rights or service mark rights under U.S. law, by consistently using a trademark or service mark in connection with goods or services, and/or by registering the trademark or service mark with one or more appropriate governmental authorities.

Most people and businesses pick lousy names from a trademark or service mark perspective, and most people pick those names without the assistance of an entertainment lawyer or a trademark lawyer. The majority of marks go unregistered, and the majority of trademarks or service marks are never properly searched and cleared by a trademark lawyer, entertainment lawyer, or anyone else before use. Again, there is very little new under the sun, and as most all trademark and entertainment lawyers will attest, most word-paths have been tread upon by someone else previously. Then again, searching and registering a trademark or service mark, with or even without a trademark lawyer or entertainment lawyer, is not without cost. So, many cost-constrained start-up businesses elect to just “wing it” and dispense with the search until they can afford to “get around to it”. And surprisingly, sometimes even major-league companies who can otherwise afford to so it, dispense with the trademark or service mark search, dispense with the services of the trademark lawyer or entertainment lawyer, and just go ahead and use the proposed name. Ironically, this type of decision keeps trademark and entertainment lawyer litigators who work the back-end of these fact patterns, in business.

Trademark lawyers and entertainment lawyers may sometimes advise their clients to select multiple-word names rather than one-word names – as rock-band-name trademarks or service marks, for example – since the statistical chances of infringing some other band’s name and trademark or service mark are likely thereby somewhat reduced. Most artists, on the other hand, are solely concerned about the aesthetics of the band name, and if a one-word band name sounds right to them, they will use it and darn the torpedoes. This type of decision can also keep trademark and entertainment lawyer litigators who work the back-end of these fact patterns, in business.

I have admittedly not yet trademark-searched any of the following band names. But as a trademark and entertainment lawyer, a proposed one-word band name like “Blur”, at first blush, would trouble me a bit more than the two-word “Def Leppard”, from a trademark or service mark perspective – since, without knowing anything else about the underlying facts, I would assume that the statistical chances were somewhat higher that another band might be named (or might have been recently named) “Blur”. When a trademark lawyer or entertainment lawyer performs a search on a trademark or service mark or proposed mark, these kinds of concerns and historical analyses come into play.

Trademark lawyers and entertainment lawyers may also sometimes advise their clients to try to use more incongruous word combinations as band-name trademarks or service marks, rather than predictable word combinations. By this rationale, “Squirrel Nut Zippers” (the first time, for the candy, that is!), or “Stone Temple Pilots” start to look pretty good as far as their trademark or service mark prospects, to say nothing I suppose about “Orchestral Manoeuvres In The Dark”. After all, what are the odds, the trademark lawyer queries, that the full name “Orchestral Manoeuvres In The Dark” name was used as a trademark or service mark by any other pop or rock band prior to or contemporaneously with 1986’s “If You Leave”? Then again, apart from entertainment lawyer legal concerns, the band and its handlers may have had trouble fitting the full name onto a record jacket sleeve, and may also have had trouble convincing record label A&R executives that the choice of name should be supported.

One must understand, therefore, that the prospect of trying to protect, let alone enforce and prevent others from using – a one-letter trademark or service mark, is the trademark lawyer’s or entertainment lawyer’s equivalent to fingernails scraping on a chalkboard. If a client walks into the office of a trademark lawyer or entertainment lawyer and says “Hi. I’d like to protect, for my own exclusive use, the letter ‘W'” – well, then absent some extreme fact pattern perhaps relating to a powerful Texas family, that lawyer can expect at least a long and tough road ahead – and perhaps a few broadsides of ridicule from the bench and other trademark lawyers and entertainment lawyers at the bar as well. They might think that the so-subscribing lawyer took Sesame Street’s commercial endorsement announcement “This program was brought to you by the letter ‘W'”, a little too seriously when younger.

Most Americans conceive of “monopolies” as something anti-competitive, unfair to the consumer, and ultimately evil – especially given publicity in recent years accorded to the Microsoft case. But what is interesting about copyrights and trademarks and service marks, as a trademark lawyer or entertainment lawyer will tell you, is that they are in fact legal monopolies protected by federal statute. A property right is, essentially, the right to exclude others from using that same property. That is conceptually quite similar to a monopoly. If I own my house, I can keep you off my land with a fence, and the law will back me up on that. If a company owns a registered trademark in “Chock Full o’ Nuts”, for example, then, through the efforts of its trademark lawyer or entertainment lawyer counsel or otherwise, that company owns the right to exclude others from using the same name in connection with the sale of coffee, and perhaps related goods and services as well.

So here is the trademark lawyer entertainment lawyer philosopher question. Haven’t we as a society gone too far, when we even entertain the prospect of a company, or a celebrity, laying claim to a single LETTER of the ALPHABET as a service mark or trademark? Indeed, should any prior claimant be able to use the services if a trademark lawyer or entertainment lawyer to legally monopolize the use of a letter of the alphabet, in connection with ANY kind of goods or services, magazine or otherwise? Should they and their trademark lawyers and entertainment lawyers even be allowed into court with that kind of argument?

Are all individual Arabic numerals also now in play for trademark lawyers and entertainment lawyers? We might as well allow some corporate behemoth to pull the character of Santa Claus out of the public domain, into the realm of copyright-protection, and charge a royalty whenever the fat man’s name or image is evoked. As for trademark versus service mark, does Mr. Claus provide goods or a service, when you get right down to it? And what about prior sources? Do the publishers of the first edition of Webster’s dictionary, or their successors, now have a valid trademark claim to assert through their trademark lawyer or entertainment lawyer litigators, against Oprah and the German magazine, for the use of “their” letter of the alphabet as a service mark or trademark?

Harkening back to the Oprah cattle litigation, some cows are sacred. Some things should simply stay in the public domain. Section 105 of the U.S. Copyright Act, for example, excludes works “of the United States Government” from copyright protection. Shouldn’t letters of the alphabet be treated the same way, as non-service mark non-trademark public commodities exempt from any monopolistic endeavors, upon instruction to all trademark lawyers and entertainment lawyers who might try to argue otherwise? There may well already be case law holding unitary alphabet letters to be disqualified from trademark and service mark protection under certain circumstances. The U.S. Patent and Trademark Office likely has trademark application and registration procedures, possibly reading to similar effect. If so, why not simply codify that common-sense principle in all applicable trademark statutes and other laws, as a de facto and de jure standing instruction to all trademark lawyers and entertainment lawyers and their clients? Among other things, a decisive action like this one could eliminate, or at least mandate a shorter life-span for, court-clogging trademark and service mark lawsuits like the “O” story.

And what’s next? Will the adjudicated winner of the O litigation also be awarded a legally-sanctioned monopoly as trademark or service mark over the corresponding three dashes in “- – -“; that is, in the International Morse Code symbol for the letter “O”? Will that be some other trademark lawyer’s or entertainment lawyer’s next argument? Or should that control instead now be awarded to the heirs of Morse, wherever they may be? And what about our National Anthem? Am I at risk of being enjoined by another trademark lawyer or entertainment lawyer from singing “O(h) say can you see… ” at the start of baseball games at Shea Stadium – I mean, CitiField? And what about Tic-Tac-Toe? Must there now be a Congressional mandate that “X” must always win, and must always occupy all 9 cells on the grid, so as not to “infringe” the trademark or service mark rights of the clients of any other trademark lawyers or entertainment lawyers? And if so, what about the fate of Whoopi Goldberg and Hollywood Squares in syndication?

A number of entertainers use single-word names, and we as a society tolerate that – as do, apparently, the trademark lawyers and entertainment lawyers that represent and enable the talent. We tolerate the Gilbert Gottfried “One-Named Boy” routine moreso if the entertainer has the talent to back it up: “Elvis”. “Sting”. Now, “Prince” is, of course, a variation on the theme, an entertainer who at one point dispensed with his chosen one-word name in favor of an arcane symbol not found in the American alphabet – with or without his trademark lawyer’s or entertainment lawyer’s imprimatur. The general point here is that, Prince aside, the trademark lawyer and entertainment lawyer will advise the entertainer that he or she may be able to build up some trademark or service mark protection in his or her continuous and uninterrupted use of the [a]rtist’s one-word name, particularly if that entertainer is extremely well-known.

But some of us trademark and entertainment lawyers and others may feel that claiming one of the 26 letters of the alphabet as your own, takes its own special brand of… uh… chutzpah. Basketball’s Oscar Robertson was known as “The Big O”, probably because fans and the press tagged him with that moniker – probably not because his trademark lawyer or entertainment lawyer told him to use it – and probably not because Oscar adopted it for himself. Oscar Robertson may not have been as well-liked a guy, if instead he himself had arrogated “The Big O” nickname for his own use! And speaking of Oscar, asks the trademark and entertainment lawyer, how ‘come he hasn’t appeared yet in this lawsuit?

In similar vein, some trademark lawyers, entertainment lawyers, and others may feel that Oprah should have been satisfied to call her magazine “Oprah” rather than, simply, “O”. It is unlikely that Oprah’s decision as to how to name the magazine was forced upon her by her colleagues – entertainment lawyers or otherwise. In other words, a different P.R. decision may have had incidental legal benefit, too.

Sure, there is precedent in the entertainment field, as trademark and entertainment lawyers are aware, for trademark or service mark use predicated upon a single letter of the alphabet. The musical group “M” had a number-one hit with “Pop Muzik” in 1979, and that was kind of cute – but the group seemed to disappear from the music scene before anyone even began to consider the trademark or service mark implications of their continued use of their band name. Perhaps the group’s trademark lawyer or entertainment lawyer will read this article and write to this website to weigh-in.

The television company “E!” of Chelsea Handler and Talk Soup renown has apparently been successful in establishing a brand name for itself, presumably with trademark lawyer and entertainment lawyer counsel and assistance, accepting the inherent challenge in generating trademark and service mark rights in a one-letter name. But the E! Network’s use of the exclamation point, and their occasional use of the linked phrase “entertainment network”, arguably properly distinguishes them from the alphabet-usurping pack. The Motion Picture Association of America (MPAA), along with the help of its trademark lawyer counsel, lays claim to its single-letter-ratings as trademarks or service marks in some fashion – that is, currently, “G”, and “R”. But then again, I suspect that the MPAA would carefully refrain from threatening another company’s use of the letter “G” or “R”, unless that use was made in the context of ratings or otherwise in connection with motion pictures or filmed entertainment.

The point is, there is something disturbing about this O lawsuit filed in the district court in Manhattan, from the perspective of an entertainment lawyer and trademark lawyer, and perhaps to others as well. What if a schoolteacher reads about this lawsuit, and now tries to find a trademark lawyer lay personal service mark claim to the letter grades “A” through “F” as used on student-graded papers? What if that same teacher starts invoicing all other teachers who grade papers in the U.S., demanding trademark royalty payments? And speaking of damage to the world of education, what will Grover, Elmo, and the gang at Sesame Street do, when they can no longer boast that a particular program is “brought to you by the letter ‘W'”, at least not without their entertainment lawyer or trademark lawyer counsel present on set? Worse yet, will that entertainment lawyer or trademark lawyer be required to wear an over-the-head costume or be a muppeteer to blend-in on the set when doing so? The consternation is enough to press the ghost of O. Henry and his trademark lawyer back into active service – the only question being, if O. Henry rejoins the non-ethereal world and joins the lawsuit, will he join as party-plaintiff or party-defendant on the advice of counsel? And, will O. Henry’s apparently-prescient use of the period after his “O” render him impervious to trademark or service mark liability?

But seriously folks, in defense of Oprah and the trademark and entertainment lawyers that love and enable her, it is apparently not her or her entertainment or trademark counsel or entities that initiated the aggressive attempts to exclude others from use of the letter “O”. Rather, according to the news reports, it was the German “kinky fashion” magazine promoting leather and garters that decided to attack Oprah’s company in the context of the New York court, and the magazine then sought out a trademark lawyer for that purpose. And in response, Oprah and her affiliates, presumably on trademark lawyer or entertainment lawyer advice, apparently decided to expand her magazine title, to make the bright-line distinction between the two magazines more apparent to all, including the consumers. Maybe as a matter of reciprocal international courtesy, and in an effort to keep this dispute from wasting further judicial resources or using up more trademark lawyer or entertainment lawyer time, the leather and garter crew should agree to change their magazine’s name from “O” to “Ouch!” But query if they thereby would risk receiving an adverse trademark or service mark claim from the ‘E!’ network based upon the use of ‘E!’s exclamation point.

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Color and Trademarks

When non-lawyers draft their own trademark applications with the United States Patent and Trademark Office (the “USPTO”), they often wonder whether they should choose a specific color or colors. The question is whether claim over a particular color will somehow increase the likelihood of your mark’s acceptance onto a USPTO register or limit the possibilities of use. To answer this question for yourself, it is important to understand the context of the color option on a trademark application before deciding whether to use it.

The leading case on use of a color is Qualitex Co. v. Jacobson Products Co. and involves the use of a special shade of green-gold coloring on the pads made and sold to dry cleaning firms for use on dry cleaning presses. When the defendant used the color on its pads, plaintiff argued that this was improper, since the green-gold on this particular product served as an identifier to distinguish Qualitex’s goods.

The court agreed with the plaintiff that the color was an identifier. As such, it was in the interest of the marketplace to prevent competitors from using the same color on the same product. This decision furthers the general policy of trademark: preventing others from copying source identifying marks reduces the consumers’ costs in shopping and making purchasing decisions.

But this is not to say that everybody should use color as an identifying mark. I would suggest a claim over color for unique packaging, (e.g., Tiffany’s robin’s-egg blue boxes) or if the color truly separates your product from others (e.g., green ketchup). Otherwise, choice of a specific color will be limiting.

In the instance that you already are using a specific color whenever you use the mark, you may still want to consider claiming it in favor of having flexibility down the road. If you have been using one shade of purple for a decade-now an “incontestable” mark-but switch to using pink, as well, you might be diluting your previous mark, at least insofar as claiming the use of that shade of purple on that specific product. Even worse, if you expand the product to use the entire rainbow, you could be undoing years and years of hard-earned good will by creating confusion among your own consumers.

Therefore, unless you began your application with a specific color in mind, it is probably inadvisable to claim one as your own. Nevertheless, if you still have questions, you should contact a seasoned trademark attorney who can collect all the specific facts of your specific circumstance. This is the only way to get an absolutely accurate response to any legal question.

This article merely gives an overview of some very complicated rules and does not attempt to include all factors and considerations that apply in all instances. It should not be construed as legal advice to your specific problem.

Commercial Law – Trademark Infringement on Google AdWords

Whenever a business successfully builds a positive reputation in the marketplace and establishes a solid client base, there is always the potential for trademark infringement to become a problem. Competitors may attempt to use names, phrases, designs and colour schemes which are similar to your own in order to lure away your customers by causing them to mistakenly associate your positive reputation with the product or service which they are providing.

This is particularly the case in the online world, where branding is extremely important. Most people find what they are looking for online by typing a search term into a search engine’s web page and then following the links to relevant websites which the search engine returns. But how does the law of trademark infringement apply to the sponsored links, such as Google AdWords?

What is Google AdWords

AdWords is a service which Google offers under which business can pay to “sponsor” a word. When this word is typed into Google, links to businesses which have sponsored that word appear prominently on the right hand side of the web page. So for example, an electrical goods company might sponsor the phrase “Cheap TV” and whenever someone searches for this phrase the company’s advert will appear at the right hand side of the page. The contentious issue here is that Google will allow businesses to sponsor AdWords which are also the brand names or trade marks of competitors.

What is the law?

In July 2010 the European Court of Justice issued guidance on the circumstances in which one company may use a trademark of another company as an ad-word when delivering its judgment in the case of Portakabin Limited and Portakabin BV v Primakabin BV.

In this case Primakabin and Portakabin were rivals which manufactured the same line of products (portable accommodation/storage units). Primakabin had purchased the ad-word “portakabin” from Google, together with common mis-spellings of this word. This meant that whenever anyone typed “portakabin” into Google, they would see an advert for Primakabin’s products at the top-right of the screen. Portakabin sued, claiming that Primakabin were infringing on its trademark.

What about Google’s liability for trademark infringement?

The European Court of Justice decided that in cases where one company purchases an ad-word which is also a trademark of a competitor, there is not a trademark infringement as long as the advert makes it clear that there is no commercial connection between the company placing the advert and the company which owns the trademark. The issue which any court must consider is whether there is a likelihood that anyone who saw the advert after typing in a search term would be confused as to the origin of the goods or services which are advertised

The case also clarified that it is possible for a company to infringe on its competitors intellectual property rights by purchasing and using AdWords which are mis-spellings of the competitor’s trademark. In these cases the advertiser has the same duty to make it clear that it is not commercially connected with the company which owns the trademark.

What about Google’s liability for trademark infringement?

The issue of Google’s liability for trademark infringement by advertisers or service users who host content online has already been addressed by the European Court of Justice in the case of Google France v Louis Vuitton. The Court decided that Google is not liable for trademark infringements which are perpetrated by users of its services as long as it takes steps to remove any content which infringes on another party’s intellectual property rights as soon as is reasonably practicable after it has been informed of the infringement.

Getting a Trademark – Do You Always Have to Register?

Unregistered Trademarks and Passing Off

Many businesses fail to register their trademarks, either due to an oversight, or on cost grounds. However, even if you have not registered your trade mark you may still be able to take action against another party who uses your mark without your permission by means of the common law of passing off. Passing Off is not governed by any statute but has developed through case law over many years.

Passing off can occur by somebody adopting the same or similar trademark as yours, by adopting the same or similar packaging or appearance as that of your product, or by implying to the public that their goods or services are in some way connected with yours when they are not.

In order to bring a claim for passing off several things must be proved, namely:

– that the goods or services sold under your trade mark must have acquired goodwill or a reputation in the market;

– that there has been a misrepresentation by the other party (whether or not intentional) leading, or likely to lead, the public to believe that its goods or services are actually yours; and

– that you have suffered, or are likely to suffer, some damage as a result of the false belief caused by the other party’s misrepresentation. This usually means establishing actual or likely financial loss, and could include loss of profit in an existing market, loss of reputation or loss of opportunity to expand.

Passing off can only protect trade marks that are actually being used and have acquired a reputation. Due to the things that must be proved in order to establish the claim, it is often very difficult, and as a result, expensive to prove a passing off action. Passing off, if established, can be the subject of injunctions awarded by the courts and the party guilty of passing off can be ordered to pay damages and costs. It is much easier and cheaper to bring infringement proceedings if the trademark has been registered. Trademark registration will also provide broader protection, enabling you to take action in many circumstances that are not covered by passing off.

If you suspect that a competitor is passing off their products or services as yours, it is important that you seek advice immediately. The longer you delay, the more difficult it can be to remedy. But the best way for a business to protect itself is to ensure that all their trademarks have been registered.

The Trademark Application Process and Costs (Detailed)

A United States trademark grants its owner the right to prevent others from using a confusingly similar mark in connection with similar goods or services. The cost of a trademark application can vary considerably depending on the existence of any similar marks.

The trademark application process moves through three stages:

Stage 1 – The Application

As a preliminary matter, trademark applicants have four options for trademark application depending on their particular circumstances:

1) Section 1(a) of the Lanham Act (the United States Trademark Act) allows application for applicants who have already made use of their mark in United States commerce (e.g., already doing business in the US).

2) Section 1(b) of the Lanham Act allows application for applicants who verify that they intent to use the mark in United States commerce within 1 year of publication on the National Register. Such application must be perfected within 1 year by submitting specimens to prove use of the mark in commerce. The purpose of a 1(b) application is for applicants who have not yet used the mark in the US to “lock” in their date of priority to the date of their 1(b) application — in other words, if another entity uses a similar mark after the applicant’s 1(b) application but before the date of perfection, the original applicant will be accorded priority as of the date of its 1(b) application.

3) Section 44(e) of the Lanham Act allows foreign applicants who already own a trademark registration in their foreign country of origin to register their mark in the US based on such foreign registration.

4) Section 44(d) of the Lanham Act allows foreign applicants to “lock” the day of priority for their mark to the day of their foreign trademark application. The practical results of this are the same as in the 1(b) application described above.

Applicants may apply under a combination of the above options. For example, they may apply under Section 1(a) if they have already used the mark in the US and they may also use Section 44(d) to lock their date of priority to the date of their potentially earlier foreign application.

Costs for Stage 1:

USPTO Fees: The United States Patent and Trademark Office (USPTO) charges a $325 filing fee for each class under which the applicant wishes to register their trademark. A “class” is a description of the type of goods or services with which the mark is associated. For example, is registered for Class 35 (advertising information) and Class 38 (interactive bulletin boards).

Attorney Fees: Most attorneys charge hourly for trademark work or otherwise charge a flat fee based on the estimate time it would take to complete the initial filing. The initial paperwork for a Stage 1 filing should take no longer than one hour. As explained below, it is not possible to estimate the time it would take to move an application through Stages 2-3.

Search Fees: The USPTO does not refund filing fees, thus prior to filing the application it is highly advisable to have your attorney conduct a search of the USPTO database to confirm that a registration or application for a similar mark does not already exist. The most advisable search method is to have the attorney engage a specialist service, like Thompson CompuMark, to perform a thorough search. Such services generally charge $600-800 for the search.

While most attorneys can perform the search for a lower fee, we feel it borders on malpractice not to urge the client to pursue the more thorough option.

Stage 2 – Office Actions

Once the application is filed, the USPTO will assign an Examiner to evaluate the proposed trademark and decide whether it meets the requirements for publication to the Official Gazette.

The USPTO will issue Office Actions, in the form of correspondence from the Examiner to the applicant, if the Examiner finds defects in the application. The most common and innocuous defects include improper or vague description of the goods and services associated with the mark or a vague description of the mark itself. Such defects can be remedied with a short and simple response to the Office Action.

A more serious Office Action arises if the Examiner finds the application to be confusingly similar to an already-existing trademark. While the chances of seeing this situation are practically non-existent if the applicant performed a thorough search of the USPTO database prior to applying, there is, unfortunately, no 100% guarantee.

At this stage, depending on how similar the existing mark is, and based on his attorney’s advice, the applicant may wish to dispute the examiner’s decision or to abandon the application.

Costs for Stage 2:

USPTO Fees: There are no USPTO fees for responding to Office Actions. There is a $100 per class filing fee to appeal the Examiner’s final decision if the applicant’s responses fail.

Attorney Fees: Attorneys charge an hourly rate for responding to Office Actions and, where applicable, for appealing adverse decisions.

Stage 3 – Publication to the Federal Register and Potential Opposition

Once the applicant successfully moves through Stage 2 by satisfying any problems the Examiner may have with the application (or by successfully appealing an Examiner’s adverse decision), the proposed trademark will be published in the Official Gazette to allow other trademark owners the opportunity to Oppose the mark in the event that they feel it is substantially similar to their registered mark or their unregistered mark for which they may have priority of use (e.g.., they used the mark in US commerce before the applicant used it or before the applicant established priority with his application).

If a trademark owner makes an opposition, the application will proceed to litigation between the Applicant and the Opposer before the Trademark Trial and Appeal Board (TTAB).

Costs for Stage 3:

USPTO Fees: There are no USPTO fees for Stage 3 other than any TTAB filing fees which may arise out of an Opposition litigation.

Attorney Fees: If the application is Opposed by another entity with a substantially similar mark, the application will proceed as a litigation. It is difficult to estimate the number of attorney’s hours such litigation will require. Moreover, additional costs of such litigation will include the costs of discovery to ascertain whether the marks are similar, whether the Opposer has priority, as well as any other remedies that applicant may have depending on the facts learned in discovery.

The total costs of such litigation can range in the tens of thousands of dollars and, as such, we advise our clients that litigation is always the option of last resort. If such a situation occurs, we help our clients minimize costs by vigorously pursuing a settlement with the Opposer whereby the Opposer would agree to a “concurrent” use of the mark in return for some set value of remuneration.


The foregoing provides a list of all of the possibilities in the best and worst case scenarios. In most cases, a trademark application will proceed to the Official Gazette without any Office Action (Stage 2) or any Opposition (Stage 3). As explained above, we always advise our clients to elect a thorough USPTO database search prior to filing the application because such a search is the best way to predict how the application will proceed.