Category Archives: Trademark and copyright

DECISIONS, DECISIONS

Have a new mark that you want to use?  I discussed in an earlier post that you should conduct a search for other marks that are the same or similar to your intended mark, before the launch.  What happens if your search scores a “hit?”

Move Along – Nothing To See Here

You can just go with another mark, avoiding the other mark entirely.  Whether you should do this before or after answering the following questions sometimes is self-evident.  I would be stupid to launch “Matt’s Coca-Cola Experience” without getting permission from Coca-Cola, for example.

Mother, May I?

You could request permission or consent from the owner of the other mark; this often takes the form of license.  An example would be a franchisee getting a license from the franchisor to use the franchisor’s mark.  Do not count on a competitor from giving you a license, though.

Fight of Flight

Maybe you are free to use your mark, because the competitor’s mark does not apply to your market.  Act with caution – the other’s mark could be strong enough to make it unwise to use a similar mark in another field.

The competitor’s mark may have a fatal weakness that you can exploit.  The competitor may have failed to protect its mark, turning that mark into a toothless, paper tiger.  There are times when it makes sense to launch a legal challenge to such a mark.

Will You Marry Me?

Maybe the other mark is ripe for a purchase.   This can be a win-win when the price is right.

Baby Needs a New Pair of Shoes

You can roll the dice and go forward with your mark without answering any of the questions.  Maybe it will work out or maybe you that decision will backfire.  A finding of intentional infringement can make matters worse if you lose a trademark infringement lawsuit.

A Little Elbow Room, Please

Maybe you find that there are several other similar marks in use, and maybe you determine what you have relatively low legal risk by going ahead with your mark.  Will you have to spend more time and money than you otherwise would to get your mark noticed?  Will the crowded marketplace make it harder for you to get exclusive rights to your mark?  Whether your mark is worth the effort will answer whether you should go with that mark or get a new mark.

As We Bid Adieu

Learning that someone else is using a mark that is the same or similar to your desired mark is not the end of the world.  Getting guidance from a competent professional will be well worth it.  This blog post is not a substitute for that advice.  Please contact us if we can be of help.

This post provides general information only.  This post is not intended to create an attorney-client relationship or to be legal advice about your situation.  Laws change and your situation may be different.  You should consult with a licensed attorney for legal advice specific to your circumstances.

© 2017 Matthew D. Macy

Watch Your Step With Your New Mark

You have a name, slogan, logo, or other mark for your new business or product.  Look first before spending time and money to identify your brand with that mark.  A search beforehand may warn you of another mark that could hinder your use of the new mark.  It is not fun to get a cease-and-desist letter or a lawsuit you could have avoided.

There are services available to conduct searches for you; the costs and efficacy varies.  There are do-it-yourself searches for little to no cost that you can do first.  Here is a sampling of DIY searches:

  • Google and other search engines:  Self-explanatory.
  • Federal Trademark Registrations:  The US Patent & Trademark Office (“USPTO”) handles the federal registration of trademarks under the Lanham Act.  The USPTO database has registered marks, marks that were registered but lost that status, and applications for registration, is available for free via the Web.  You can search the database here.  Try different variations on the name – spacing, punctuation, and non-letter characters can affect the search results.  There also is a way to search for logos and non-verbal marks using keywords and design codes.
  • State Trademarks and Trade Names:  States often have their own trademark registration and trade name databases.  You can search Georgia trademark registrations here and Colorado trademark registrations here.  The registration of a trademark or a trade name could be at the same place, or, like in Georgia, be in separate databases.  Georgia has trade name registrations take place at the county superior court, for example.
  • Records of incorporations, etc.:  A person forming an entity usually has to submit formation paperwork with the appropriate state agency, such as the state secretary of state.  The databases often are searchable online.  You should search the databases for the states where you want to do business.  Here are links to the sites for the Georgia’s Secretary of State’s website and the Colorado Secretary of State’s Web site.
  • Domain names:  A domain name register should give you the ability to conduct an online WHOIS search on a domain name.  A WHOIS search should tell you whether anyone has registered the domain name or whether it is available.
  • Social Media:  Examples of where to search are Facebook, Houzz, and LinkedIn.  There are many more social media sites; how far you should go will vary on the nature of your business.
  • Online phone book: Put in your intended name and something similar to see what pops up.

Remember GIGO (garbage-in-garbage-out) when searching.  The more varied are your searches, the more reliable are your results.  Examples of variation include spelling the mark correctly and incorrectly, spelling out non-word elements and visa versa (e.g., “plus” and “+”), using different phonics (e.g., “phone” and “fone”), altering the spacing between words, and so on.

Each database has its limitations.  Georgia’s trademark registration database, for example, will not show any pending applications.  It can take a week or so for new federal trademark applications to show on the USPTO database.  Even with that in mind, the search results can guide on whether a more in-depth search makes sense, where you can proceed with peace of mind, whether you should proceed with caution, or whether you should change your mark.

Stay tuned for a discussion of options if you get a “hit” on any of your searches.

This post provides general information only.  This post is not intended to create an attorney-client relationship or to be legal advice about your situation.  Laws change and your situation may be different.  You should consult with a licensed attorney for legal advice specific to your circumstances.

This article has links to websites owned and operated by third parties.  Use those links at your own risk.  The author including those links is not an endorsement by the author or the author’s firm of those third parties, of the content of those sites, or of the security of those sites.

© 2016 Matthew D. Macy

NO ® FOR THE LIKES OF YOU!

A federal trademark registration gives the owner of the mark many benefits.  Not everything can be registered, however, even if you can use the mark in the marketplace.  One limitation is a ban in Section 2(a) of the Lanham Act on registering “scandalous” or “disparaging” marks.  A “scandalous mark” is one that involves immoral or scandalous matters.  A “disparaging mark” consists of something that may disparage persons, institutions, beliefs, or national symbols, or bring any of them into contempt or disrepute.

People have argued over what fits within those definitions, with uneven results.  Who wins those arguments can decide whether the application to register fails, or whether a currently registered mark loses its registration status.  Just ask the Washington Redskins what it is like to have a mark lose registration status because of Section 2(a).

A band of Asian-Americans called the “The Slants” went and upset the Section 2(a) apple cart even more.  A member of the band filed an application with the US Patent & Trademark Office (“USPTO”) to register “The Slants” as a trademark.  The USPTO rejected the application, citing Section 2(a), because “slant” is used as a racial slur aimed at Asians.  The band member appealed, eventually getting his case before the full panel of the Federal Circuit Court of Appeals.  In 2015, the Federal Circuit sided with the band member, finding that the ban on registering scandalous or disparaging marks to be unconstitutional.  There is a request pending before the US Supreme Court to hear the case.

While we wait for the US Supreme Court to decide whether to take the case, and to rule if it does take the case, the USPTO instructed its trademark examiners to put on hold any application to register a mark that has scandalous or disparaging content.  The owner of a mark still can apply, but the application will be put on hold.  If Section 2(a) survives the recent court challenge, the owner still can argue that the mark falls outside the ban in Section 2(a).  Others have made similar arguments, with some winning and others losing.

The owner of that kind of mark should have a discussion with a knowledgeable trademark attorney to decide when and whether to apply to register.

For those who want to read more, you can find the Federal Circuit’s full panel decision here and read an NPR article about “The Slants” here.

This post provides general information only.  This post is not intended as legal advice or to create an attorney-client relationship.  Do not rely on this post as legal advice.  Laws change and your situation may be different.  You should consult with a licensed attorney for legal advice specific to your circumstances.

© 2016 Matthew D. Macy

“You Infringed on My Copyright!  Pay Up!”

In a previous post, I went over some risks of using copyright-protected images without a legal right to do so.  The characters in the dialogue below are dealing with a demand letter about alleged infringement for use of an image.  We join the discussion midstream.

Q:        Let us assume that we infringed on the copyright by using the image, and that we really do not have much in the way of defenses.  Do we have to pay what the copyright owner demands?

A:        We should evaluate whether the amount demanded is reasonable, whether it would be worthwhile to negotiate, or whether you should do something different.  We need to get some information to do this.

Q:        What do we need to know?

A:        For starters, we need to know: (1) whether the person who sent the letter owns the copyright or has the right to act on the owner’s behalf; (2) whether and when the copyright owner has registered the image with the Copyright Office; (3) when the image was first published; and (4) when you allegedly used the image without permission.  We also need to know whether you made any money by using the image, and how much, if anything, the copyright owner claims to have lost because of your infringement.

Q:        Why does all this matter?  

A:        A copyright owner usually can get its lost profits and your profits arising from the infringement, if any.  Statutory damages might be an alternative.  It is common for statutory damages to be greater than either side’s profits or lost profits.  Whether the copyright owner can get statutory damages depends on the timing of events.  The timing of events affects whether the copyright owner can get attorney’s fees added to the award if we end up in court.  There also are exceptions we need to consider.

Q:       What can I do to avoid this mess in the future?

 A:        Make sure you have the right to use any other images that you are using or are going to use.  Do not wait until you get a demand letter or lawsuit about an image you are using.

This post provides general information only.  This post is not intended to create an attorney-client relationship or to be legal advice about your situation.  Laws change and your situation may be different.  You should consult with a licensed attorney for legal advice specific to your circumstances.

© 2016 Matthew D. Macy

I Can Copy That, Right?

Q:        I found a photograph online.  May I use it on my website if no one registered the photograph with the US Copyright Office? 

A:        You should not use the photograph unless you own the copyright or have the right to use it.  Registration with the US Copyright Office is irrelevant as to whether you have a right to use the photograph.

Q:        What should I do if I do not own the copyright?

A:        You should determine beforehand whether you need permission to use the photograph.  Photographs generally qualify for copyright protection, but there are times when a photograph does not have that protection.  Copyright law also allows certain uses that do not require you to get the copyright owner’s permission.  If you need permission, find out whom to contact to get permission, or a license, to use the photograph.

Q:        What happens if I use the photograph without a license even though the law says I need permission?

A:        The cost of copyright infringement can be steep.  If the copyright owner wins, the owner can pick either (1) your profits from using the photograph plus the owner’s lost profits, or (2) statutory damages.  Statutory damages can range from $200 to $150,000 per work.  Whether the winner gets an attorney’s fee award is another concern.  Copyright infringement also can be a crime.  A license usually is far cheaper than a copyright infringement claim.

Q:        What if I hire a web designer who uses copyrighted photographs without permission?

A:        The copyright owner still can sue you.  When you knew or should have known that the designer used a copyright-protected photograph without permission could affect how much you have to pay.  You can sue the designer, but that is cold comfort.  Ask the designer for a copy of any licenses or other proof that you can use the material on your site.  Keep the evidence safe in case you need to deflect an infringement claim in the future.

Q:        But it is just a photograph.

A:        A copyrighted photograph is someone’s property.  Would you like it if people took your property without your permission?

Q:        Good point.

This post provides general information only.  This post is not intended to create an attorney-client relationship or to be legal advice about your situation.  Laws change and your situation may be different.  You should consult with a licensed attorney for legal advice specific to your circumstances.

© 2016 Macy Law Firm, PC