Category: Intellectual Property

  • White Lives Matter Trademark Explained

    You’ve probably seen the news about how a certain celebrity can’t a get a trademark for apparel bearing the despicable phrase, “White Lives Matter.”

    Let’s breakdown what’s happened in this situation so far:

    • Everyone justifiably lost their minds when a celebrity wore a shirt that said “White Lives Matter” in a fashion show in Paris this fall.
    • The news reported that, even if this celebrity wanted to register a trademark for “White Lives Matter” for apparel in the U.S., he can’t because someone else already filed that trademark application with the U.S. Patent and Trademark Office (USPTO) on October 3, 2022.
    • The applicant for this trademark subsequently assigned this trademark to Civic Cipher, LLC, a syndicated black radio show on October 17, 2022.
    Photo courtesy of Courtesy of Candace Owens/Instagram

    How ITU Trademark Applications Work

    The trademark application in question is only an Intent To Use (ITU) application. A company or person can file an ITU application when they expect to bring a good or service to market within 6 months, and it’s a way to stake a claim in the desired trademark, so no one else takes it in the meantime.

    Once the USPTO issues a Notice of Acceptance for your ITU application, you have 6 months to either submit a Statement of Use, proving that you’re using the trademark in commerce, or you can request a 6-month extension. The USPTO will grant you up to 5 extensions, so essentially, you actually have up to 3 years to bring your product or service to market. If you don’t do it by then, that trademark application is “dead,” and you have to file a new trademark application and start over.

    The upside of filing an ITU application is that your federal rights date back to when you filed the application with the USPTO.

    That means Civic Cipher, a black radio show, will have to sell White Lives Matter branded apparel to get the registered trademark.

    Black Radio Show is Selling WLM Shirts (allegedly)

    As I was working on this post, I popped over to the USPTO trademark database (publicly available and free), to look up this trademark application. To my surprise, Civic Cipher submitted proof that they’re selling White Lives Matter branded apparel on November 8, 2022. Here’s the picture of their proof.

    Photo from white lives matter trademark application

    Civic Cipher did something very smart. They didn’t just take and submit a picture of a White Lives Matter t-shirt. This shirt has a tag that says, “White Lives Matter.” That’s the real branding and proof that they’re using the trademark.

    Here’s something important to know if you have or want to sell a brand of apparel:

    Phrases on T-shirts Aren’t Trademarks

    That’s right – putting a word, phrase, or logo on a shirt does not make it a trademark for apparel. The shirt is the product. The trademark is the branding on it, like on the tag inside the shirt, the paper tag attached to it at the store, and/or the bag or box it’s delivered in. That’s where the trademark for the product goes. The trademark goes on the product; it’s not the product itself.

    The purpose of a trademark is to prevent consumer confusion. They don’t want Company B to copy Company A’s branding so closely that consumers might buy Company B’s product, thinking it’s from Company A.

    Even though a phrase on a shirt isn’t a trademark, there’s still an argument that Civic Cipher could send cease and desist letters or takedown notices to prevent others from selling White Lives Matter t-shirts, asserting as the trademark owner, they have exclusive control over who sells apparel containing their brand in the U.S. – if the USPTO registers their trademark.

    Civic Cipher Hosts – Quinton Ward and Ramses Ja; photo courtesy of civic cipher

    Civic Cipher Doesn’t Have a Registered Trademark Yet

    The trademark application for White Lives Matter for apparel was filed on October 3, 2022. The USPTO’s backlog is so massive, it takes them more than 8 months to do the initial review of a new trademark application.

    That means the USPTO won’t weigh in on whether White Lives Matter is trademarkable until May 2023 at the earliest.

    Even if Civic Cipher did everything correct with their trademark application, the USPTO could refuse to register it on grounds that it contains “immoral, deceptive, or scandalous matter.”

    This is a gray area of the law. It’s ok to have a disparaging trademark (e.g., “The Slants” as a trademark for an Asian music group) and to use swear words in your trademarks; however, the Ku Klux Klan can’t register their organization’s name as trademark. I don’t know how the examining attorney assigned to this application will classify “White Lives Matter.”

    (Yes, whether your trademark complies with U.S. Trademark Law is determined by an individual, and different examining attorneys have come to different conclusions regarding the same trademark application.)

    Where is Civic Cipher Selling their WLM Apparel?

    One of the rules to get a trademark is, to be “in commerce,” you have to have a bona fide offer of sale to the public. You don’t have to make a sale, but your product or service has to be available to the public.

    For most of my clients, this means they have to have a website where they show or describe the product, with a price, and button that allows consumers to make a purchase.

    Since Civic Cipher has submitted proof that they’re using their mark “in commerce,” I wanted to see where it’s available for sale. Civic Cipher has a Redbubble online store where they sell Civic Cipher t-shirts, but the White Lives Matter shirt isn’t listed there.   

    When a simple Google search didn’t yield any useful results, I contacted Civic Cipher directly. (I haven’t heard back yet.) I would not be surprised if the price on this shirt is outrageously high or if all the profits go to a charity that helps black people.

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  • No Copyright for AI-Generated Work

    Artificial intelligence by Wendelin Jacober

    During an evening event at Content Marketing World this year, I was talking with my fellow speakers, and I basically held court to field their questions about how copyright applies to content that’s created with artificial intelligence (AI). This led to an invitation from the brilliant Christopher Penn to do a more in-depth interview about this topic as a Fire Side Chat for Trust Insights.

    Only Humans Can Create Copyrightable Works

    This issue was largely settled by the infamous Monkey Selfie case. Here’s what happened:

    Photographer David Slater was taking pictures in Tangkoko reserve in Indonesia. At one point, Naruto, a macaque monkey, picked up Slater’s camera and took several pictures, including the infamous selfie.

    Slater wanted to register the copyright in the photo, but People for the Ethical Treatment of Animals (PETA) sued Slater on behalf of Naruto, arguing that Naruto should own the copyright since he took the photo.

    The judge ruled that only humans can create copyright-protected works. Since Naruto took the photo, not the photographer, the photographer doesn’t own the copyright.

    In fact, no one owns the copyright in this photo. Since it was taken without a human author, there is no copyright in this selfie. Anyone can use it for any purpose without needing permission.

    Owning an AI Machine Does Not Give You a Copyright in the Machine’s Output

    This came up in a different copyright matter. Steven Thaler owned a machine that created the work entitled, “Entrance to Paradise.” When he tried to register the copyright for this work, he listed the machine, Creativity Machine, as the author, and himself as an author merely as the machine’s owner. The Copyright Office rejected the application, saying that owning the machine isn’t enough to make you an author of the machine’s output.

    If you write software code for an AI machine or product, there’s copyright protection for the code assuming it qualifies as an original work of authorship. However, even when software code is protected by copyright, the results of running the code are not necessarily protected by copyright. Remember there is no copyright protection for facts.

    Artificial Intelligence by Wendelin Jacober

    AI-Generated Content Might be a Derivative Work

    Whoever owns a copyright, get to control how that work is copied and distributed as well as what derivative works can be made from it.

    If you put someone else’s copyright-protected work into an AI machine or software, the resulting AI-generated content would be a derivative work of the original. If you do this without a license, then that’s likely copyright infringement.

    This is similar to using Google Translate to create unauthorized translations of someone else’s work.

    Could the Creator of AI Software be a Copyright Owner of the AI-Generated Work?

    I would not be surprised if this question is revisited by the court in the future.

    This question was touched on briefly in the Torah Soft case. An author wanted to use printouts from the Torah Soft software in their book and the software’s creator said this was an unauthorized use of his copyright in the software code.

    The judge ultimately held that that the code was not an original work of authorship, therefore, not copyrightable, and there was no copyright in the printouts because both the code and the printouts merely contained an unoriginal arrangement of facts. (This is also why there’s no copyright protection for phonebooks.)

    Might the outcome have been different if the input was not protected by copyright but the software code that created the output is? Maybe. This is an issue that hasn’t been taken up by the courts yet. The owner of the copyright in the code would have to prove that the output from the code is a derivative work.

    There’s also the question of whether the method used to create the output is original enough to be worthy of a patent. The court may have to consider whether this is a situation involving patent rights or copyright rights, or both.

    This is a gray area of the law. I don’t have high expectations that the owner of the code will successfully assert rights in the output of their code, but I think these types of questions will come up moving forward.

    What If Your Content is 100% AI-Generated?

    For now, AI-generated content isn’t worth consuming. To be blunt. It’s usually crap. Remember when AI studied pick up lines and was tasked with writing its own?

    However, if you’re using AI-generated content, or perhaps just AI-generated images, this comes with a risk. Assuming the AI-generated content is not a derivative work of someone else’s copyright protected work, it’s content that is not created by a human; therefore, cannot be protected by copyright and will automatically be in the public domain. Anyone, including your competition, could use it without penalty, at least from a copyright perspective.

    Otherwise, it’s imperative to keep a human substantially involved in creating your original works to retain its copyright and associated rights. For now, the best use of AI-generated content seems to be as a tool for exploring ideas for content and creating inconsequential images where you don’t care if anyone uses them.

    Will Certified Artisan Content Become a Real Thing?

    Chris and I joked that in the future, content made my humans will be labeled as “certified organic content” or “handcrafted artisanal content.”

    While we said this in jest, if the quality of AI-generated content improves, this could be how some content creators differentiate themselves from marketers who solely use AI without engaging a human to create original copyright-protected work(s) as part of the creation process.

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    If you liked this post and want more, please subscribe to Ruth & Consequences. This fortnightly newsletter gives you exclusive content and a behind-the-scenes look into my life as a non-binary lawyer and entrepreneur and the lessons I learn as the Evil Genius behind Geek Law Firm. (When you own the business, you get to pick your own title.)

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  • Registered Trade Name vs Registered Trademark: Who Wins?

    “Kum & Go,” photo by Dustin Murrell Broadcast Journalist (Creative Commons License)

    Last week, I wrote about intellectual property disputes where one side had the website domain and the other side has the registered trademark. Someone asked me how do registered trade names factor into these situations.

    What’s a Trade Name?

    In general, a trade name is something you register with your state. This is different than registering a trademark with the U.S. Patent and Trademark Office (USPTO). This is a way to register the name of your company or your product with your state. It typically takes only a matter of days to get and is cheap. In Arizona, the filing fee for a trade name is $10.00, whereas the minimum filing fee to register a trademark with the USPTO is $250, and it takes months (if not longer) for the USPTO to process your application. Your state may also give you the ability to register a state-level slogan or logo.

    Value of Registering a Trade Name

    To be honest, there’s little value in registering a trade name at the state level. It could be helpful in situations where the name of your legal entity is different than the company or product name. For example, if your entity was XYZ Company LLC and your did business as Green Ice Marketing, if you registered Green Ice Marketing as your trade name, your state might not let another company use the same name and compete with you ask Green Ice Marketing LLC.

    Even if you have a state-level trade name, it does not automatically give you statewide common law trademark rights. Common law trademark rights are based on your established geographic market, based on where you’re using the mark in commerce. Thus, if you register a trade name with your state, but you’re only using it commerce in your county, your common law trademark rights may only be that county, not the whole state.

    Registering a trade name creates a third-party record of when you started using a trademark, which may be helpful in a trademark dispute, but there are other ways to demonstrate when you began using a particular trademark in commerce.

    Trade Name vs Trademark

    In a trademark dispute, timing is often a deciding factor when two companies are selling similar products using the same or confusingly similar trademarks. In a trade name vs trademark dispute, there are two ways it could go down.

    Option #1: You Registered a Trade Name Before They Registered the Trademark.

    As stated above, when you only register a trade name with your state, there are no associated federal trademark rights that come with that registration. You only get common law trademark rights based on the established geographic market where you’re using your trade name in commerce.

    The moment your competition registered the trademark with the USPTO, you become “frozen” in your established geographic market. The registrant gets the exclusive right to use the trademark everywhere else in the United States except within the geographic market you established prior to their registration.

    It’s like a snow globe dropped over your area at that moment. They can’t go into your area, and you can’t expand beyond that invisible barrier unless you rebrand. This is what happened in the Burger King situation.

    Option #2: You Registered a Trade Name After They Registered the Trademark.

    Once someone registered a trademark with the USPTO, they have the right to keep competitors from entering the marketplace in the U.S. while using their trademark or one that is confusingly similar to it.

    Once they get their trademark, you can’t start using it too for a similar product or service.

    Here’s the rub. You state probably will not cross-check the USPTO database if you try to register the same mark as a trade name. They will deny your trade name application only if it matches something in their database of registered trade names in that state. Similar to the web domain situation, a lot people get a false sense of security when they can get a state-level trade name, but it won’t provide any protection from an accusation of trademark infringement in this situation.

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  • You Have the Domain. They Have the Trademark. Who Wins in the IP Dispute?

    “Stone Stacks – Lindisfarne” by Linton Snapper from Flickr (Creative Common License)

    I saw this scenario come through my Reddit feed. Two U.S. companies are in the same industry and using the same name for their brand. One has the dot-com web domain. The other has registered the brand as a trademark with the U.S. Patent and Trademark Office (USPTO). Which company should get to use the brand and force the other to change their name?

    Timing Matters: Who Was First

    The answer to every legal question starts with “It depends,” and here it depends on which company was using the mark in commerce first. By “use” I mean which company made the first bona fide offer for sale to the public, not who came up with the idea for the brand first.

    Option #1: You Started Using the Domain Before They Registered the Trademark

    If two companies in the same industry the U.S. are using the same trademark, but not one has registered it with the USPTO, then each one can establish what are called common law rights in the mark in the geographic areas where they are respectively using the trademark. They can co-exist peaceful as long as one doesn’t try to infiltrate the other’s established geographic market.

    Here’s what happens when they register the trademark with the USPTO – they get the exclusive right to use the trademark everywhere in the U.S., except within your established geographic area at that time. It’s like a snow globe drops over your geographic market. They can’t go into your area, but you can’t expand your market beyond that boundary. This is what happened when the chain Burger King registered their trademark and there was a mom-and-pop restaurant with the same name already in existence. If you want to expand your geographic market beyond that invisible boundary, you have to rebrand.

    These rules are easier to follow when businesses were brick and mortar establishments. Now that commerce is largely internet-based, a company is likely to naturally expand merely by being online. You probably can’t add any new social media platforms using the trademark without them claiming your infringing on their intellectual property rights.

    If you come to me with this situation, unless you’ve established nationwide common law rights before they registered the trademark, it’s often best to save your money on litigation and rebrand instead.

    Option #2: They Registered the Trademark Before You Start Using the Domain

    Remember, when they registered their trademark with the USPTO, they got the exclusive right to use their trademark everywhere in the U.S. except any geographic area where you established your market for the same mark prior to that date. If they registered before you started using the mark at all, you can’t enter the marketplace using that trademark in that industry. They win. You lose. You have to rebrand.

    What if it’s the same situation, but you were using the mark before they registered but you hadn’t created the website yet? Publishing the website after they registered, even if you were already selling the product using that brand, would be an act that would expand your market beyond your now-limited established geographic area, which is not allowed. I would expect them to send you a cease and desist letter demanding that you take down the website.

    Getting the Domain is Not Proof to Trademark Availability

    A lot of people make the mistake of thinking that if they can get the dot com domain they want that there aren’t any trademark issues that they need to worry about. There are many reasons why a company might not get the dot com of the trademark, even if it was available:

    • They are using another type of domain, like .org.
    • They are only use companyname.com for their website and not get separate domains for each of their brands or other trademarks used by the company.
    • You and they have trademarks that sound the same but spelled slightly different.
    • You and they have slightly different domains, such as XYZ.com and TheXYZ.com.

    When I’m working with a client on selecting a company name, product name, or other trademark, I encourage them to search for their prospective trademark on the internet as well as on the USPTO database. What’s tricky about this is that even if you don’t find an exact match to the trademark you want to use, there could be one out there that is confusingly similar to the one you want to use. It’s best to do as thorough of a search as possible before investing your time and money into your brand.

    Can the Trademark Owner Force You to Give Them the Domain?

    There are lots of reasons why a person or company would have a domain that matches your registered trademark that don’t violate your intellectual property rights. If it’s a situation where your website infringes on their rights, they can demand that you remove the website. It doesn’t mean they can force you to give them the domain, though that is something you can try to leverage. They can always offer to buy it off you. (I often advise my clients wait for them to offer to buy it first so as to avoid looking like a cybersquatter.)

    If they are willing to fight you for the domain, there is a risk that they may file a claim against you in court or under the Uniform Domain-Name Dispute-Resolution Policy (UDRP). If you find yourself in a trademark dispute where you have the coveted domain, it’s best to consult a trademark attorney who can examine your specific situation, explain your options, and advocate on your behalf.

    Question of the Day: Two Companies Using the Same Trademark 

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  • What Zach Kornfeld is Doing Right with his New Business

    “Thumbs Up!” by Kevin Gale from Flickr (Creative Commons License)

    This week, Zach Kornfeld of The Try Guys announced that he is starting a new tea company in two months or less, without leaving his apartment, and spending less than $500. The goal is to create and sell two original blends: “one for energy and one for chillin’ out.”

    Constraints are Good for Creativity

    It’s intriguing to watch someone create a new company is real time, particularly in this situation where Zach has a limited budget and is sheltering in place. These limitations are not necessarily bad things. On the contrary, entrepreneur and keynote speaker Jay Acunzo regularly talks about how “Constraints are a strength.” They increase the need for thoughtfulness and creativity. Also, check out his fantastic book Break the Wheel. It has an entire chapter dedicated to constraints and decision-making.  

    Zach started by consulting Jason D’Mello at the Fred Kiesner Center for Entrepreneurship for business advice, who advised him to create a DBA (doing business as) as the start of his company. (I recommend that every entrepreneur create a separate business entity – LLC or corporation – for their company, but in California, that comes with a hefty annual fee that would break Zach’s budget, so I get why he’s starting with a DBA.)

    Before filing DBA, Zach needed a name for this new company. Zach’s first idea was to name his tea company Turtle Tea because it doesn’t matter how you start or how many times you fail. What matters is that you keep trying – slow and steady.

    What Zach Did Right – Legally Speaking

    Trademark laws apply to branding in the U.S. – company names, product names, logos, slogans, etc. There are many legal issues that can crop up when selecting a brand. Before Zach ran with Turtle Tea as his brand, he did a lot of things right.

    He Checked the USPTO Trademark Database

    Zack used the Trademark Electronic Application System (TEAS) on the U.S. Patent and Trademark Office  (USPTO) website, to try to register Turtle Tea as a trademark. He didn’t just submit an application but checked the USPTO’s trademark database first to see if anyone else had already registered that name.

    Unfortunately, someone else already owns a trademark for Turtle Herbal Tea. If he tried to register Turtle Tea with the USPTO, he would have been throwing money away. If Zach used Turtle Tea as a trademark anyway, he would have set himself up to get a cease and desist letter (or worse) from this trademark owner and would have had to rebrand his company.

    He Checked Alternative Spellings for Potential DBAs

    Now that Turtle Tea was off the table, Zach started running trademark searches for other potential names. One thing he did was check alternative spellings. A primary rule in trademark is you’re not allowed to have a trademark that is confusing similar to someone else’s such that consumers will be confused about whose product they’re buying. You can’t register a trademark if it sounds confusingly similar to someone else’s – different spelling but sounds the same.

    When Zach looked up “Zach,” he also had to check “Zack.” Likewise, when he looked up “Zach’s” he had to look up “Zax.” When I research my client’s trademarks, I try to look up alternative spellings to make sure a sound-alike trademark hasn’t already been registered.

    He Checked Related Products for Similar Trademarks

    When someone has a registered trademark, they have the right to use their name on their goods/services as well as on the ones they would logically expand into. For example, if someone sold milk, a product they’d like expand into is cheese or ice cream.

    Likewise, Zach needed to consider not just tea companies that had registered similar marks to what he wanted, but also other beverages. One of the names he was considering had to be rejected because it was already registered by a coffee brand.

    By the end of this video, Zach didn’t have a name for his company despite his many searches. This frequently happens. (Zach’s fans are suggesting names for his company via social media. The best one I’ve seen so far is Korndidtea – a take on his Twitter handle, @korndiddy.) Many clients send me dozens of trademarks to search against the USPTO database for them before deciding on a name. You don’t want to waste time and energy on a brand that have already been claimed as a trademark by someone else.

    I love that Zach’s experience shows that Joe Average people can use the USPTO trademark database to do their own preliminary searches when considering a name for company or product. I don’t recommend filing a trademark without consulting a lawyer, but you can definitely your basic research yourself.  

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    Ruth Carter

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  • Share, Don’t Steal Content in Response to COVID-19

    Don’t Steal by Marguerite Elias from Flickr (Creative Commons License)

    During this pandemic, many companies are reaching out to their audience with message of reassurance, information about changes in their services, and ways their audience can help during this challenging time.

    My friend, Jessica Bay, walks dogs professionally as well as educates would-be professional dog walkers. She created a helpful graphic for her audience:

    A short while later, she noticed this in her social media feed:

    And later this one:

    She asked me if these were instances of copyright infringement. If someone is copying word-for-word or close to it, that raises the red flag for copyright infringement. There are definite similarities. I wouldn’t be surprised if one of these graphics were inspired by another’s post.

    Let’s assume that one of these graphics is a rip-off of another. It doesn’t make sense to me that someone would do that. In a niche market like dog walking and pet sitting, there’s no downside to sharing another’s graphic since the provider has to be in the physical vicinity of their clients. And for companies that educate would-be dog walkers, you should be confident enough in your work that your clients aren’t going to jump ship because of a graphic on social media.

    Conversely, there are only so many ways to convey the same information, and independent creation is a defense against copyright infringement. It’s possible that each of these three companies independently came up with the idea of creating a graphic about how their audience could support the dog walking/pet care industry while under quarantine or practicing social distancing.  

    My Two Cents

    Speaking as a lawyer and as an entrepreneur, if you see a graphic that would be helpful to your audience, share it. The best way you can add to the conversation would be to create your own content that builds on the original message, not just repeats it. (If you’re going to create content that repeats another’s message or general information, at least find an original way to do it.) If someone wanted to build on this, they could have created a graphic about the importance of maintaining normalcy in your pet’s life, which includes their walking schedule.

    If you get caught copying another’s content that’s so blatant that everyone will know that one is a rip-off of the other, it’s going to have an adverse impact. Instead of coming across has helpful, you risk being seen as lacking integrity and creativity.

    If You Get Caught Stealing Content

    If someone calls you out for potentially stealing content, and that’s what you did, just delete what you created, and don’t do it again. Saying it’s a “good message to spread” is not a valid excuse for copyright infringement.

    Ripping off a company’s graphic is on the same level as claiming another person’s poem as your own because you thought it was pretty. I think some people have a mental disconnect where they don’t think copying commercial speech is as bad as other infringing behavior. (Creating a graphic with your business logo on it, even though it is not a sales pitch, is commercial speech.)

    If someone has a good message to share, and their original content is shareable, then share it. That’s the best way to share the valuable message with your audience.

    Sharing Done Right

    I have seen this graphic all over social media over the last few days:

    Hat tip to The Counseling Teacher for creating such a helpful graphic. This graphic has the right message at the right time. Additionally, I haven’t seen any instances where sharing this graphic had a negative impact on anyone’s business.

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    Ruth Carter

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  • Let’s Talk About Trademarks

    https://www.flickr.com/photos/trippinlarry/5987691227
    “Lemonade, anyone?” by trippinlarry from Flickr (Creative Commons License)

    I’m going to say “no” a lot today. I’ve seen many trademark questions lately, many of which make me cringe.

    Here’s what you need to know about trademarks. They are synonymous with branding. Your trademarks are the names, logos, slogans, etc. that you put on your products or services that differentiate you from the competition. They inform consumers about the origin and quality of the product or service.

    When you apply to register a trademark, you have to tell the U.S. Patent and Trademark Office (USPTO) what you’re claiming as a trademark and on what products or services you’re using it. The USPTO won’t register your trademark if it’s too similar to a previously registered trademark. If they have a problem with your application, they’ll send you an Office Action with an explanation of the problem, and they give you 6 months to submit a response.

    This is also why it’s possible for two companies to use the same trademark when they’re products and services are so different that no one would think they came from the same company, like Delta Airlines, Delta Faucet, and Delta Dental.

    Onto the questions . . .

    How would an Unregistered Trademark be Better for “Brand Image” than a Registered Trademark?

     A trademark is a trademark regardless of whether you register it or not. What changes is the rights you get with your brand when it’s a registered trademark. Having a registered trademark gives you the ability to stop competitors from entering the marketplace in the U.S. while using a trademark that is confusingly similar to yours. (Trademark rights are limited by country. If you have a registered trademark in the U.S., that doesn’t mean someone couldn’t register the same trademark for the same goods somewhere else.)

    When you don’t register your trademark, you only can get common law trademark rights based on the geographic area where you are using the mark in commerce. You won’t have the ability to stop a competitor from using the same or a confusingly similar trademark in another geographic area in the U.S. like you’d be able to do if you had a registered trademark.

    Additionally, if you don’t register your mark, there’s a risk that your competitor will, which will limit your ability to use your trademark to the area established by your common law rights when the other mark was registered. This happened to the first Burger King restaurant. The first Burger King was “frozen” in its established area when the franchise registered the trademark. If the first Burger King company wanted to expand beyond that area, it must do so with a different trademark than “Burger King.”

    If your company is going to license its trademark to others, having a registered trademark is more valuable that an unregistered trademark. For many companies, their most important asset is their intellectual property.

    If I Want to Apply to Register a Trademark and There’s a Competitor That’s Already Registered a Similar Name, Will I have a Better Chance with the USPTO if I Apply to Register my Logo that Contains the Company Name?

    Why do you want to a brand that’s similar to your competition? It baffles me when companies knowingly pick a name that’s like one that’s already in use. It makes wonder if the owners are trying to ride a competitors’ coattails (which is illegal) or if they don’t understand how branding works.

    The purpose of having a trademark is to prevent consumer confusion. The USPTO does not want to grant companies the similar trademarks if they’re selling similar products or services.

    For a lot of companies, I recommend filing the word mark for just their name (assuming it’s trademarkable) as well as the logo, because logos often change over time. The name of the product or company usually doesn’t.

    The USPTO requires separate applications for the logo and the word mark if you want both as registered trademarks. When a logo contains words, those often are given more weight than the rest of the logo in terms of whether there’s confusion because that’s often the most prominent part of the logo. The logo components may help differentiate your trademark from the competition, but it may not be enough. You can always apply and see what happens.

    Can I use a Cancelled Trademark if the Owner is still Manufacturing the Product?

    When you do a search on the USPTO trademark database, it will show the trademarks that are “live” and “dead.” A dead trademark may be “abandoned” or “cancelled.” An abandoned trademark was one that was applied-for but never registered. A cancelled trademark was registered at one time but not anymore.

    When a company has a cancelled trademark but is still using it, it likely means that they registered the trademark and did not file the renewal when it was due. The company still has common law trademark rights based on its geographic market.

    It may be possible to use a cancelled mark that’s still in use as long as you’re not in the competitor’s established geographic market, but I usually don’t recommend it. It sounds like a situation where you’d be setting yourself up to get a cease and desist letter and/or sued for common law trademark infringement and unfair competition.

    On the flip side, I have seen companies use trademarks that have been cancelled and the previous owner has long since stopped using the trademark or the previous owner went out of business. A few years ago, I saw popsicle companies doing this – claiming abandoned trademarks and bringing the product back to market.

    Is it OK if my Trademark is Barely Different than Someone Else’s – Like Adding or Removing a Space or Adding a Word?

    The key to whether your trademark is different enough is based on whether consumers will be confused. As such, the USPTO treats trademarks that look and sound the same as being the same. You can’t take a registered mark and change the spelling slightly and have a valid trademark for the same product or service.

    When you take someone’s trademark and add a word to it, the USPTO will consider how similar the marks are. If the main part of the mark matches an existing registered mark for the same type of product or service, it’s less likely that the USPTO will register your trademark as well.

    There is no equation or formula you can use to guarantee that your trademark application will be approved by the USPTO.

    Can I File my Own Trademark Application?

    Yes. You don’t have to be a lawyer to submit a trademark application to the USPTO, though I recommend using one. At the very least, it’s best to have a lawyer review the application before you submit it. I’ve run into too many people who submitted a trademark application by themselves for trademarks that aren’t registerable. They could have saved themselves time and money by consulting a lawyer.

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    Ruth Carter

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  • How to Write a Decent Trademark Cease and Desist Letter

    https://www.flickr.com/photos/tangi_bertin/541603067/
    Stop by tangi_bertin from Flickr (Creative Commons License)

    A friend recently forwarded me a trademark cease and desist letter he received and asked if it was anything they needed to worry about. Now, I always tell my clients to take such letters seriously, and give them their due consideration, but then I read this particular letter. It was possibly the worst cease and desist letter I’ve ever read. It was written by an entrepreneur, not a lawyer, so I automatically mentally cut the sender some slack, but still, it was bad.

    If you’re in a situation where you suspected a competitor is violating your trademark rights, please get your lawyer involved. And if you’re going to write your own cease and desist letter, make it a decent one.

    Make Sure Your Trademark has Likely been Infringed

    A trademark has two components. It’s the name, logo, slogan, etc. that you’re claiming as a trademark plus the product or service on which you’re using it. (It’s possible for two completely different companies to have the same trademark, like Delta Dental and Delta Airlines.) For many companies, the first trademark they register is just the word or phrase that is the name of your company or product/service. This is called a “word mark.” It’s just words, no images, graphics, or sounds.

    When you have a registered word mark and someone uses the same word or phrase, it’s not automatically a violation of your trademark rights. For example, Paris Hilton has registered trademarks for “That’s Hot” for “multimedia entertainment services” and apparel. These trademarks do not give her the ability to stop everyone from ever using the phrase “that’s hot,” as a descriptor. If a person is not using the word or phrase you registered as a trademark for their business, it’s likely not trademark infringement.

    What to include in a Cease and Desist Letter

    While I don’t endorse the idea of business owners writing their own cease and desist letters, it happens. If you’re going to write your own, these are some of the things I’d tell my client to include in their letter if they insisted on doing it themselves:

    • Provide the legal name of the person or company that owns the trademark,
    • Identify your trademark including the registration number and a screenshot of the trademark listing from the USPTO database,
    • Identify the alleged infringing activity, preferably with a URL and/or screenshot if it’s online or photographs if it is not, and
    • Clearly state what you want the recipient to do in response to your letter with a due date for compliance.

    When to get the Lawyers Involved

    If you encounter suspected trademark infringement, call your lawyer. Even if you want to send a cease and desist letter yourself, call your lawyer first. They can help you make sure there’s a real trademark issue that requires your attention and help you craft the cease and desist letter.

    Many of my clients want to reach out to the alleged infringer to speak business owner to business owner, first. They want to send friendly but clear cease and desist letter, and give the other side a chance to resolve the matter “without having to get the lawyers involved.” I have helped write many a letter that included that phrase. The other side doesn’t need to know that I’m already involved.

    If they don’t respond favorably to my client’s friendly letter, then I will follow it up with a strongly worded nastygram that demands that they cease all uses of my client’s intellectual property and failure to do so will result in litigation (or whatever consequences my client has selected).

    My recommendation for clients is to refrain from making threats in cease and desist letters unless they’re willing to follow through with it. Otherwise, if the other side calls your bluff and you don’t follow through, you will lose all credibility and any further demand letters will likely be ignored.

    If you threaten litigation in your cease and desist letter, be ready to pull the trigger if the suspected infringer doesn’t comply with your demands. Some people won’t take you seriously until a lawsuit has been filed. A lawsuit will force them to deal with the situation because of the court-imposed due dates or risk the effects of a default judgment if they ignore it.

    Thanks for reading this post. If you liked this post and want to know more about my work, please subscribe to the Carter Law Firm newsletter where I share behind-the-scenes information and readers get exclusive access to me.

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    Ruth Carter

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  • How to Legally Use User-Generated Content

    https://www.flickr.com/photos/zoidberg72/16243539933
    Selfie by dr_zoidberg from Flickr (Creative Commons License)

    Here’s a question I get from companies and their marketers: What are the legal dos and don’ts for using user-generated content? These are situations where a company wants to use a photo, video, or text created by one of their fans, usually from a site like Instagram, Facebook, or Trip Advisor. Many companies merely want to approach the person through the platform where they found the content they want to use and ask for permission to use it. While this strategy is convenient, it may not be in the company’s best interest.

    Using Content Within a Platform

    It’s easiest when a company wants to share someone’s post within the social media platform – e.g., sharing someone’s Instagram photo on the company’s Instagram. Many social media sites build this option into the platform where you don’t even have to ask for permission to share someone’s post on another’s account.  

    Of course, I’m a risk-adverse lawyer so I tell my clients to review the terms of service first to see what happens just in case it turns out the person who created the post you shared didn’t have the right to do so and now you have to deal with the fallout. Depending on the circumstances, I might contact the person to ask the person if they took the photo (which would indicate if they’re likely the copyright holder), try to verify that the original poster is complying with the platform’s rules

    Using Content Across Different Platforms

    Here’s where it gets a little more complicated. These are the situations where you want to take content from someone’s post on one platform and share it on a different social media site, your website, or another third-party platform. For this situation, I recommend you have a contract drafted by a lawyer. You could have them create a template for you if curating user-generated content is part of your marketing plan.

    If I were creating a contract template for obtaining permission to use content created by a user or fan, I’d likely include terms such as:

    • The user owns the IP in the content: either they created it or they have permission to use it
    • The user has authority to grant the company permission to use the content
    • The user grants the company a perpetual, irrevocable, worldwide, sublicensable, paid-in-full, royalty-free license to the company to use the content for any purpose without needing the person’s consent or credit, including the creation of derivative works (or in the alternative, that the user grants the company a copyright assignment)
    • The user will reimburse the company’s legal fees and damages if it is accused of wrongdoing because the company used the user’s content

    Such a contract would also include boilerplate verbiage, like a dispute resolution provision that states how the company and user will resolve disputes if one occurs.

    Always Apply Reality

    In any potential legal situation, be sure to apply reality. If a company wants to use a photo with two people in it, whoever posted the image may not be able to speak on behalf of the other person in the photo, and you may need release from identifiable people to avoid being accused of violating their right of publicity.

    Additionally, it will likely take longer to get permission if you want to use images and other content across platforms. Be sure to build that into your timeline if your marketing plan involves using user-generated content.

    There are also those who may question whether it’s worthwhile to have a lawyer create a contract for these circumstances. When there are no issues, a contract may seem superfluous; however, contracts are imperative in situations where there is a dispute and/or the parties forget the terms of their agreement. When you work with your lawyer to create you contract, make sure it has provisions that will apply to situations that are likely to occur as well as the worst-case scenarios.

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    Ruth Carter

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