Articles Posted in Intellectual Property-copyrights and trademarks

By the time the 1970s rolled around, there were about fifty breweries in the United States, according to The Economist. A slew of new laws promoting tax breaks for small microbreweries spurred an era of innovation and explosion of smaller, craft breweries. Today, there are over 3,000 breweries, making the industry both crowded and competitive.

One of the prominent issues that arises, according to this article from NPR.org, is the challenge of finding a name that is not already taken by another brewery. There is a dearth of names that have not already been trademarked by others that connote a positive association with beer. Consequently, there have been more legal issues popping up with name trademarks because so many designs and names infringe on others’ similar ideas.

With so many breweries around the country, people do not have malicious intention to copy others’ names and designs, but there is inevitable overlap with so much market saturation.  Frequent legal issues emerge because there are public misconceptions about the fact that merely providing state registrations and ownership of domain names ensure ownership of the copyright/trademark; but that is not always the case.   A trademark attorney navigates murky waters where there is no national database of  beer brands/trademarks, and conducts common law and internet searches  – to see if there are overlapping images or names of other breweries. Intellectual property is vital to creating a strong business, and this web of legal issues associated with craft breweries’ trademarks illustrates that.

That is the question posed in a wonderfully entertaining and historically interesting article written by Dave Kluft from Boston’s firm Foley Hoag.

As his article points out, accusations of being a “witch doctor” and the use of “witchcraft” have served as a basis for defamation and slander suits around the country, and still percolate through various courts.   In New York, witchcraft is no longer considered a crime, so it is unlikely to be considered slander per se, however, you should still mind what you say.

In defamation per se cases, New York law doesn’t require a plaintiff to prove that they were “damaged” by the offending words, but a jury will decide how much or how little injury occurred. Damages are assumed only where the person defaming someone alleges that the injured person:

Shaw Industries Group, a leading carpet manufacturer recently sued The Hershey Company in Federal Court in Georgia for a declaratory judgment that its Chocolate Kiss colored carpet did not infringe Hershey’s CHOCOLATE KISS trademark.

According to the complaint, Shaw has been using CHOCOLATE KISS as a color in connection with its carpets since 1993 and has used it in connection with 200 carpet styles since that time. Shaw received a cease and desist letter from Hershey’s in December of 2012 which claimed that the use of the CHOCOLATE KISS mark illegally diluted and infringed its trademark. Despite its almost 20 years of use of the Chocolate Kiss color name, Shaw claimed that this December letter was the first time that it was notified that Hershey’s objected to the use. In its response to Hershey’s cease and desist letter, Shaw noted that it was discontinuing use of the CHOCOLATE KISS colored carpets in June of 2013.

Apparently dissatisfied with Shaw’s response to its cease and desist letter, Hershey’s sent a responsive letter demanding that Shaw “immediately” discontinue the carpet. Shaw responded by commencing the lawsuit. Given the planned phaseout of the Chocolate Kiss colored carpet, it is doubtful that this case will ever go to trial, however, it presents an interesting issue of whether products named after popular goods and services do infringe or dilute the trademarks in those goods. In light of Shaw’s long use of this carpet color, another interesting issue would be whether the defense of laches would be sustained by the court. Laches is a defense to certain actions based upon the right holder failing object or do something to curtail the illegal use.

Everyone knows a tagline or two-Nike’s “Just Do it”; McDonald’s “I’m Loving It”; Cotton’s “The Fabric of Our Lives”; the list goes on and on. These taglines are essentially a branding slogan used to market or advertise a given good or service. The purpose of a tagline – and a good tagline will achieve this purpose – is to create a phrase that will help consumers remember your product. Some taglines even speak to the nature of their product: if you are going to Burger King, you are going to remember that you can have it your way; if you choose Allstate as your insurance company, you are going to remember that you are “in good hands.”

But how does one keep from having their tagline stolen from underneath them? The answer is not novel, nor it is necessarily difficult, if you are the first to “coin” this term, you trademark it. Per the United States Patent and Trademark Office (“USPTO”), trademarks protect words and symbols that distinguish products or services from those of other sellers or manufacturers and indicate the source of the product or service. Essentially what this means is that your tagline must be very specific to your company; it cannot be so general as to encompass many goods or products. This is because if the tagline is given trademark protection, other companies are foreclosed from using such phrases in their taglines.

The steps to obtain trademark protection are simple, but very particular. First, one who seeks to have their tagline trademarked must make certain that their idea does not conflict with an existing slogan that has been trademarked. There is a free device on the USPTO website called the “Trademark Electronic Search System” that can be used to conduct this search. Next, you must write a description of your tagline linking it to your good or service. It must be specific enough to set your tagline apart from others-be sure to include your slogan in standard size as you are not allowed to trademark any specific color, font, font size, or design for your tagline. Third, you file this application with the USPTO. You will receive a number to use as your receipt. Then, you wait to receive a response to your application from USPTO.

Today, a vast majority of us use the Internet at least once a day. In fact, if you are reading this blog, you have just proven my point! Using the Internet has only gotten easier with search engines like Google and Yahoo. So naturally, from a business standpoint, it is smart to get as much Internet exposure as possible to market your product!

If you are just starting out, you want to pick a name that has terms that are already widely searched. For example, “[y]ou’d rather have a name like Moviefone than one like Fandango, because that is what someone is going to plug into a search engine. . .” suggests Allen P. Adamson, managing director of Landor Associates, a brand design firm. See New York Times.

But what Mr. Adamson also points out is that you will likely be challenged on that name-namely by gigantic corporations looking to put a financial burden on small companies trying to patent simple terms. Id. Professor Barton Beebe at New York University Law School who specializes in intellectual property law explained it as such: “If they can’t win in the marketplace, they try to soften them up with legal fees and distract them. Even if they lose the case, it’s a Pyrrhic victory because the small company has wasted so many resources.” Id.

Section 503 of the United States Copyright Act provides for statutory damages of up to $150,000 per infringment for willful copying. The statute also provides for attorneys’ fees, costs and lost profits and damages. The Copyright Act applies to all types of creative works, including this one (and all other blog posts).

The Hudson River villages are full of talented people who are looking to protect the fruit of their creativity. Many times, however, people are confused by the different types of “intellectual property” that exist, which laws apply, and whether they can actually protect their creative ideas, designs, or other work. What are the differences between trademarks, copyrights and patents, and how can you protect them.

A trademark is identifies the source of a particular “good or service.” Most often, a trademark is a word (or a series of words), a logo or picture, but trademarks can also be sounds, colors, devices or even the way something appears. For example, a restaurant can have a trademark for the way it decorates or individual features of how it presents its food. Trademarks are geographic in nature, meaning that someone with protection in the United States may not have the same trademark in Canada, China, or elsewhere. Trademarks result from the of use (or intended use) of the mark in commerce and does not necessarily need to be registered with the U.S. Patent & Trademark Office to have enforceable trademark rights. As with any legal right, legal protection and filing brings certain rights and obligations, like statutory damages or the obligation to chase after infringing products.

A servicemark is simply a trademark that is used in connection with services instead of goods. If you wish to use a particular trademark, it is wise to conduct a trademark search prior to beginning such use. The search will enable you to determine whether someone else is using a similar mark for similar goods and services to ensure that you do not infringe someone else’s mark once you begin your use. In today’s market, where goods and services are hawked on line, on the street corner, and almost everywhere, there are millions of potential conflicts, which require careful legal analysis. It is advisable to have an attorney assist you to conduct the trademark search and to handle the application process with the US Trademark Office if you (and your attorney) decide to file. A trademark will not expire if the owner continues to use the mark in commerce in connection with the goods or services specified. Once a mark is registered, however, it does periodically need to be renewed.

So, you spend a lot of time blogging, or you have swell content on your web-site which someone has blatantly copied (hijacked). What do you do to protect your copyright or trademark?

The Problem

The drafters of the Copyright Act (1976)) never contemplated the ease and speed of copyright infringement made possible by technological advances which include the Internet which has billions of pages of content.