How To Trademark Your Own Name

0688 Pittsburgh - Senator John Heinz History Center by Klaus Nahr from Flickr (Creative Commons License)

0688 Pittsburgh – Senator John Heinz History Center by Klaus Nahr from Flickr (Creative Commons License)

Recently a friend posted on my Facebook page, “I’m considering trademarking my name. Can I do that?”

Yes you can, but it’s a little complicated. Let’s start with some trademark basics.

There are five ways to describe a potential trademark: fanciful, arbitrary, suggestive, descriptive or generic. Fanciful, arbitrary, and suggestive marks can be registered on what’s called the primary registry of the U.S. Patent and Trademark Office (USPTO) as soon as you’re using them in commerce. When yo have a registered trademark, no one can enter the market in your industry and use your trademark or something confusingly similar to it. Generic marks can never be registered. Descriptive marks fall in between these two groups.

Descriptive trademarks describe the product they’re attached to. If you have a descriptive mark, you can put on the USPTO’s secondary registry when you start using it in commerce, but you can’t bump it to the primary registry until have “acquired distinctiveness,” which typically happens after five years of continuous use.

When you name your business after yourself – i.e., John Smith Graphic Design (and your name is John Smith), you have a descriptive trademark. If you’ve only been in business for a short time, the USPTO doesn’t want to give you the exclusive rights to your name in your industry – thus all the other John Smiths who are graphic designers couldn’t call their companies, “John Smith Graphic Design” or something similar to it. They make you wait until you’ve been in business for five years before giving you nationwide exclusivity over your company name in your industry.

So can my friend register a trademark for her name? Probably, but I’d have to take a closer look at her situation to determine how long she’s been using it as a trademark and whether someone else has already registered the same name in the same industry.

If you have any questions about whether you can register your desired trademark, feel free to connect with me on Twitter, Facebook, LinkedIn, Google+, YouTube, or send me an email. You can also subscribe to the firm’s monthly newsletter. If you want more information about Carter Law Firm, please visit the homepage.

Intellectual Property in Comic Books

Comic Books by Sam Howzit from Flickr (Creative Commons License)

Comic Books by Sam Howzit from Flickr (Creative Commons License)

I had the pleasure of presenting on Comic Book Creator Rights with the award-winner comic author Mike Baron at Phoenix Comicon last weekend. We talked about how important it is for writers and artists to understand what rights they have in their work and the various ways they can protect it.

Copyright
An artist or writer has copyright rights in their work the moment they put fingers to keyboard or pen to paper. As the owner of their work, they can control where their work is copied, distributed, displayed, performed, and what derivative works can be made.

Unlike books where a complete story is often contained in a single volume, a comic book story may be broken up into several 22-page issues. One thing Mike and I suggested to our audience was registering the copyright in the “story bible” as well as each issue that the artist creates. A story bible is a master document that lays out the setting and norms of that universe and the backstory and characteristics of each major character.

The copyright laws regarding infringement for published and unpublished works are different, and under the current laws (that are in need of overhaul), a work that is released only online is “unpublished.” To maximize your options for recourse (i.e., financial damages), I advise artists to register their work with the U.S. Copyright Office before they release it if it is unpublished. Mike also suggested doing a short run of each issue so the work will qualify as “published” and the rules about when you have to register to be eligible for what’s called statutory damages are more favorable.

Trademark
A comic book artist could have several trademarks related to their series – the name of the series, logos, slogans, and the name and possibly depiction of the characters. Any or all of these could be trademarks used to market the artist’s work.

For each of these potential trademarks, it’s a good idea to run a search on the U.S. Patent and Trademark Office’s (USPTO) trademark database to make sure that another artist doesn’t already have the exclusive right to use that trademark in relation to comic books or similar products. If they do, they can force the other person to rebrand.

If the desired trademarks are available, putting a superscript “TM” next to them will put everyone on notice that the artist is using them as trademarks, not just elements in their series.  Registering them with the USPTO will increase their value and give the artist the exclusive right to use those trademarks. No one else in the industry could have the same trademark in the U.S. Registration also increases their value and may make the artist’s work more desirable if their goal is to be acquired.

Identifying and creating a strategy to protect your intellectual property is complicated, so if you want to talk more about this subject, feel free to  connect with me on TwitterFacebookYouTubeLinkedIn, or you can email me. You can also subscribe to the Carter Law Firm monthly newsletter.
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Can You Trademark & Copyright a Phrase?

What's not wrong with PIPA or SOPA? by opensourceway from Flickr (Creative Commons License)

What’s not wrong with PIPA or SOPA? by opensourceway from Flickr (Creative Commons License)

I saw this tweet come through my feed over the weekend.


It made me grin, and then my big dorky legal brain kicked in and had to analyze the possibilities.

Can You Trademark a Phrase?
It depends.

If a phrase is being used as a tagline or slogan for a company or product – think “M’m! M’m! Good!” for Campbell’s Soup or “Just Do It” for Nike – then yes, you can trademark it. If it’s just a phrase that’s not connected to a product or service, then it’s not trademarkable.

The purpose of the trademark is to differentiate similar products and services from each other so consumers know what they’re buying. When you register a trademark, you have to tell the U.S. Patent and Trademark Office what you’re claiming as your trademark (name, logo, slogan, etc.) and on what product or service you’re using it. A cool phrase without a product or service is just a phrase. It can’t be protected with a trademark.

Can You Copyright a Phrase?
Probably not.

The purpose of a copyright is to entice authors and artists to create works by giving them the exclusive right to control where their work is copied, distributed, displayed, performed, and what derivative works can be made from it. They have these rights the moment the original work is “fixed in any tangible medium.”  A phrase is often too short to be original so it doesn’t qualify for a copyright, even if it is fixed in a tangible medium like on paper or a digital file. If a person had a copyright in a phrase, they could stop others from using it in their work and it would create a big mess.

Think about Paris Hilton and “that’s hot.” She does have a trademark that phrase in conjunction with “multimedia entertainment services” and alcoholic beverages. She can stop you from using “that’s hot” as a slogan or product name in those industries, but she can’t stop you from saying “that’s hot” in general.

What about “Terminally Soulless Douche Canoe?”
“Terminally Soulless Douche Canoe” is an awesome phrase. You could use that as a company name, product name, or slogan if you want, but you have to be able to identify what industry that company or product is in. Unfortunately, even though I think it’s highly creative, it’s too short to get a copyright by itself. If it was part of a larger work – such as an essay, blog post, poem, book, or integrated into a work of art – the artist would likely have copyright protection for the larger work, but probably not for the phrase alone.

For more on the difference between trademark and copyright:

If you want to chat more about trademarks and copyrights, connect with me on TwitterFacebookYouTubeLinkedIn, or you can email me. You can also subscribe to the Carter Law Firm monthly newsletter.
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How To Trademark a Business Name

Can programming language names be trademarks? by opensourceway from Flickr

Can programming language names be trademarks? by opensourceway from Flickr

Last week a friend asked me if a business could trademark their name. Anyone who’s spent much time with me knows that the answer to every legal question is “It depends.” In this case it depends on whether your business name is trademarkable and if anyone else had claimed the same or a similar name for your category of goods or services.

When you start a business, check the U.S. Patent and Trademark Office (USPTO) database to see if anyone has registered the name you want to use (or a similar one) for selling the same goods and services as you. If someone’s already using the name you want, you will likely be infringing on their trademark rights if you use the name on your products. They could force you to change your name and rebrand if you use the name that someone’s already registered. If you were using the business name on your products and someone registers the name before you, you’ll be in the Burger King situation where you can keep using your name, but only in your established market.

Once you establish that your desired name hasn’t been registered by someone else, you have to look at whether the name you want is trademarkable. Not every business or product name can be a registered trademark. Here are the five types of trademarks.

1. Fanciful Marks: Fanciful marks are words that didn’t exist before you stuck it on your products. Examples include Exxon and Kodak. These marks can be registered with the USPTO main registry.

2. Arbitrary Marks: Arbitrary marks are words in real life, but they are stuck on a product that has no connection to the word. For example, the mark “Apple” for computers, cell phones, and digital music players is an arbitrary mark. The fruit has nothing to do with digital machines and gadgets. These marks can be registered with the USPTO main registry.

3. Suggestive Marks: Suggestive marks are marks where if you think about it, you can make a connection between the mark and the product. “Playboy” as a mark for a men’s magazine is a suggestive mark. These marks can be registered with the USPTO main registry. It’s sometimes hard to discern the difference between suggestive and descriptive marks.

4. Descriptive Marks: Descriptive marks merely describe the product. This includes businesses where the owner names the business after themselves. These marks can be registered on the USPTO main registry after they’ve established “acquired distinctiveness,” which usually means you’ve been using the mark for five years.

5. Generic Marks: Generic marks are the name of the products themselves. It would be if you had an apple orchard and wanted to sell your apples using the mark “Apples.” If the USPTO let you register that mark, no other apple farmers could call their apples “apples” without infringing on your trademark rights. Generic marks can never be registered with the USPTO.

This video may help. You can watch it below or see it here.

If you want to know if your business name can be your trademark and the risks and rewards surrounding registering your mark, contact a trademark attorney in your community.

You can connect with me on TwitterGoogle+FacebookYouTubeLinkedIn, or you can email me.
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The Oatmeal Sued Again – This Time for Trademark Infringement

One of the Greeting Cards available on TheOatmeal.com

I suspect he has a harder fight on his hands this time around.

Ars Technica released a story this week that The Oatmeal (aka Matt Inman) is going back to court, courtesy of Oatmeal Studios. Oatmeal Studios is a greeting card company that’s suing the artist for trademark infringement because he’s selling greeting cards on The Oatmeal website.

Matt became more infamous than ever with his legal issues related to FunnyJunk earlier this year. I think that was a pretty easy fight for him to win, but this time he has a more formidable opposition.

According to the USPTO, Oatmeal Studios has been selling greeting cards under this brand since 1978 – that means they’ve been selling cards since before Matt was born. In 2004, the company registered the trademark “Oatmeal Studios” for use on “greeting cards, gift cards, occasion cards, paper party decorations, writing pads, note pads, and memo pads.” That means no one can start using “Oatmeal Studios” as a trademark on these or similar products anywhere in the United States after the mark was registered.

Matt has had his site since at least 2009 according to the WhoIs records. He started drawing comics and now he also sells greetings cards, prints, mugs, t-shirts, stickers and posters on his site.

I suspect Oatmeal Studios thinks “The Oatmeal” is too similar to “Oatmeal Studios” so they want to shut down at least the greeting card arm of his operation. Since they have the federally registered trademark, they might succeed, but I think there’s a strong argument that the marks are different enough and the products are different enough that Matt could be allowed to sell his cards because no consumer would ever confuse the two products.

Let’s take a brief look at the factors the court looks at when deciding the likelihood of confusion.

  1. Strength of the Plaintiff’s Mark: “Oatmeal Studios” for a greeting card company sounds like an arbitrary mark to me, which is a pretty strong mark. This makes it more likely that consumers will be confused about the difference between “Oatmeal Studios” and “The Oatmeal.”
  2. Degree of Similarity between the Marks: The marks are pretty similar. One has an added “the” and the other has “studios.” I think the fact that Matt doesn’t have “studios” or something along those lines as part of his name helps him. “Oatmeal” describes the company on one side but “Oatmeal” describes him as a person on the other.
  3. Proximity of Products: Matt sells his cards on his site. Oatmeal Studio’s cards look like the cards I see in Walgreens and stationary stores. The fact they’re not sold in the same places helps Matt’s case.
  4. Likelihood that the Plaintiff will Bridge the Gap: These companies both sell greeting cards, but I doubt Oatmeal Studios will be selling signed prints, posters, mugs, t-shirts, or stickers anytime soon.
  5. Evidence of Actual Confusion: Has anyone been confused about the differences between Oatmeal Studios and The Oatmeal? I doubt it.
  6. Defendant’s Good Faith in Adopting the Mark: If memory serves, Matt’s alter ego The Oatmeal came from his activities in the gaming world. It had nothing to do with Oatmeal Studios. I suspect when he started his site to share his comics that he wasn’t thinking of creating a line of greeting cards.
  7. Quality of the Defendant’s Product: Go check out Oatmeal Studios’ website. I see no similarities between these cards and The Oatmeal’s greeting cards except that they’re both on paper. I think they’re of equal quality as paper products, but when you look at the quality and characteristics of the artwork, they’re not similar at all.
  8. Sophistication of the Buyer: People who buy The Oatmeal products specifically seek out Matt’s work. They will not even thing for a second that Oatmeal Studios is his work.

I think there’s a good chance that Matt can argue that there is no likelihood of consumer confusion when it comes to these two brands. The names may be similar, but I think the products are different enough that Matt has a good shot at winning. I hope this case also inspires Matt to register his trademark for his products to avoid similar problems in the future.

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Celebrity Trademark Woes

Ivy Leaves by D H Wright from Flickr

Ivy Leaves by D H Wright from Flickr

In the last week there have been a few stories about celebrities running into trouble with prospective trademarks. I thought I’d break down the two major stories I’ve heard.

Blue Ivy
Jay-Z and Beyonce had a daughter earlier this year and named her Blue Ivy Carter. (Why do celebrities give their kids such stupid names?) According to the news report, Jay-Z filed an application to trademark her name within days of her birth. It seems very strange to me that a high priority of a new parent is starting a product line based on their kid’s name.

To have a trademark, you have to select a mark and the product or service you’re going to use it with. A mark can be anything that will differentiate your product or services from the competition – a word, a tag line, a color, a scent, a sound, etc. Its purpose is to inform consumers about the source and the quality of the goods they’re buying. Once you register a mark with the U.S. Patent and Trademark Office, no one can use a similar mark on similar goods and services because it might lead to consumer confusion.

Jay-Z’s trademark plan hit a bit of a snag. When he applied for the trademark, he was likely informed that there are several registered trademarks featuring the phrase “blue ivy.” One is an event and wedding planning service, another is an online furniture retailer, and another is a retail store that sells clothing, jewelry, accessories, and giftware.

Jay-Z and Beyonce could register “Blue Ivy Carter” as a trademark, but not to sell a good or service that was similar to one of the existing registered marks. It appears they’ve registered the mark for skin care products, baby products, ring tones, key rings, and accessories among other things. The list is disgustingly extensive.

The best part of the trademark record is where it says, “The name ‘BLUE IVY CARTER’ identifies a living individual whose consent is of record.” That’s funny.

Khroma
The other trademark story I heard recently involves the Kardashians. Apparently they plan to release a makeup line called Khroma Beauty that is expected to be sold in Sears and CVS Pharmacies. The problem they’re running into is the fact that there’s a salon called Chroma Makeup Studio in Hollywood that sells its own Chroma brand of makeup. I couldn’t discern in a quick search if the studio owner had registered the trademark.

The general rule in trademark is that it’s not enough to have a different spelling of the same word as your competition’s mark. For example, if someone owed an “Alligator Furniture Store” in your city, you probably couldn’t open a competing store called “Allig8tor Furniture.”

Even without registration, the owner of the Chroma mark gets the exclusive rights to use his mark in commerce wherever the market has been established. If nothing else, he might have a valid argument to keep Khroma makeup out of the stores near his studio. He’s asked the Kardashians to change the name of their makeup.

When selecting a potential mark, it’s a good idea to check the U.S. Patent and Trademark Office to see if someone has already registered the mark you want to use on similar goods and services. If they are, you’ll have to pick a new trademark.

It’s also prudent to run a simple Google search to see if someone is using the mark in commerce without registering it. If they are, you’ll have to consider whether it would be better to pick something new or use a similar mark knowing that the other user has the exclusive right to use the mark where they’re established. If you register your similar mark, you can use it everywhere in the country except the areas where your competition established itself prior to your registration.

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