Thursday, July 20, 2006


The last post about Apple's new trademark "NUMBERS," put a thought in the mind of Bryan Adams of Teaneck, NJ.

"Is that why the TV show is called 'Numb3rs'?"

Well, that's hard to say. If I were to guess, I would say that is more of a stylistic choice than a choice because of trademark law.

This is for a few reasons. First off, not many television shows have their titles registered as a trademark. The simple reason for that is there was a time when television shows were not as marketed as they are today. The only association for the name was, probably, the show.

Today, with the advent of t-shirts and DVDs and a million different action figures based on so many television shows, it should come as no surprise that more titles are being registered.

"NUMB3ERS" recently registered on January 31, 2006. Its registration number is 3055208 (for those who would like to look it up). It is registered in International Class 41 under the goods/services of "Entertainment services in the nature of a dramatic television series." (This does make me wonder how a television series provides services of any nature if it's dramatic. It seems more like goods than services to me.)

"NUMBERS" for Apple has not yet registered, but was allowed to continue. It is in International Class 9 for goods/services of "computer software for home, education, business, and developer use."

Can "NUMBERS" and "NUMB3RS" exist next to each other? Absolutely. One of the hallmarks of trademark law is that marks are defined by their industry, goods/services the mark is related to, and the strength of the mark.

Here, the two marks are in completely different industries. One is for a television show and the other is for computer software. You can also argue that the two marks are not that strong.

Trademark strength is defined by how it is related to its mark. The types of marks are defined as:

  • Fanciful
  • Arbitrary
  • Suggestive
  • Descriptive
  • Generic
A fanciful mark is a mark that has no definition in the dictionary. These are the strongest trademarks because the only relation that exists is to the product sold. Think "Kodak" for cameras and film, or "Clorox" for bleach.

An arbitrary mark is a mark that is a word that is not used in the context of the mark. Think of "Oracle" for computer software or, even "Apple" for computers.

A suggestive mark suggests some quality or characteristic of the mark. "Coppertone" for sun tanning products is the classic example.

A descriptive mark is the weakest kind of trademark. There is a direct link between the mark and the products without any thought needed by consumers. Think "Jiffy Lube" for automobile oil change services. These marks can become stronger with time and use.

A generic term is not a trademark and has no protection. Think "Ball" or "dish."

How does this relate to "Numbers"? Well, both are probably suggestive marks. "Numbers" for a spreadsheet program describes what the software does. There might be more to it, but on the most basic level, the mark describes the product. "Numb3ers" is a television show about a person who uses advanced mathematic principles in order to solve mysteries. It can adequately suggest the premise of the show.

Think about a mark like "eBay" or "iPod." If someone started to make eBay brand home appliances, there would be a likelihood of confusion because "eBay" can only mean the website that sells goods by third parties in an auction format. The link is there in consumer consciousness.

Do the different spellings mean anything? No. They are pronounced the same and would be treated as the same word. Note that "doughnut" (the correct spelling) is treated just like "donut" in trademark law. They sound the same and they also look relatively similar.

So, "Numbers" can describe software and "Numb3ers" can describe a television show. The marks are not strong enough to cause confusion in consumer thought. The spelling differences will not mean much, either.

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Tuesday, July 18, 2006

Apple has a new trademark.

According to a story on, Apple has registered "NUMBERS" as a trademark.

"Numbers," so say the rumors, is going to be the name of Apple's new spreadsheet software for a new suite of office software for the Mac. The article deals with Apple's European trademark filings, so a look at the U.S. Patent and Trademark Office database reveals that "NUMBERS" is Published in Class 009 (which is where computer software is classified - as electrical and scientific apparatuses) for the goods and services of "computer software for home, education, business, and developer use."

Unlike the European applications, Apple is only claiming software but also claims what is called priority. This means that Apple is basing this trademark application not only on its own use of "NUMBERS" in the United States, but also on an application in another country so it can have the filing date and details of the earlier application. In this case, it is Malaysia. That means Apple is most likely going to try to apply "NUMBERS" in the same classes and same goods as it is in Malaysia (like Apple is doing in Europe).

Also, the U.S. application for "NUMBERS" has no date to indicate the first use of "NUMBERS" in commerce. That is because there is no date that Apple has used "NUMBERS." This is called an intent-to-use trademark application.

Apple has filed based upon its intent to use it in for the goods and services claimed in the application. When this trademark is allowed (the trademark registrant receives a Notice of Allowance from the U.S. Patent and Trademark Office), Apple has six months to show that the company is using the mark in the goods and services claimed. After that period, the trademark may be registered.

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Wednesday, July 12, 2006

Mene Gene Redux - Though it is not Over

First off, I want to thank Lou Raguse, the journalist who covered the Mean Gene story for KELO-TV in and its website,, for helping me sort out some of the facts. You can also read the complaint and the judge's written decision for the case.

Jeff Okerlund, former president of Hot Stuff Foods had a handshake agreement with his uncle, "Mean Gene" Okerlund to use the name "Mean Gene" on a food product. When all the Okerlunds left the company, the mark was still used on food. Hot Stuff applied for federal trademark registration on April 14, 1998 and the mark registered on March 14, 2000. Hot Stuff even uses it in press releases.

The brand still sold well, so three of the Okerlunds started their own company with the "Mean Gene's Pizza" mark. This means that they were in direct competition with a registered mark.

It makes me wonder if they even consulted a trademark attorney. On one hand, it is difficult to contest a mark that is registered. (The lesson - ALWAYS register your trademarks.) But maybe this was purposeful. Maybe they are trying to show that the "MEAN GENE'S BURGERS" trademark is not as strong as the Patent and Trademark Office believes. Maybe this is their way of combatting by arguing that the real mark belongs not to Hot Stuff Foods, but to Gene Okerlund. It is a tenuous argument, to say the least. (Why would Hott Stuff have registered the mark if they did not believe it was strong enough to register?)

The decision in the case is not a final decision. A trial did take place in June, but the judge only ruled on a preliminary injunction. The judge has asked for more briefs in order to rule fully on the issues of the case.

Here is my best guess as to the Okerlunds arguement. "MEAN GENE" itself is a "common law" trademark. It belongs to Gene Okerlund. Common law trademarks are established in connection with specific goods and services. Those rights only extend towards markets and geographic areas where the mark is used. Similar marks may exist if they are used in different (or remote) territories or in connection with unrelated products.

The big problem is that even if there is a common law trademark in "MEAN GENE," the arguement returns to the industry. Is it wrestling? What else can it be?

Why should a business register a trademark?

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Tuesday, July 04, 2006

"Weird Al" Yankovic vs. Those Who Do Not Understand

According to a recent NPR story, James Blunt's record label, Atlantic Records has told "Weird Al" Yankovic that he cannot release a parody of Blunt's hit song, "You're Beautiful" called "You're Pitiful."

Can a record label do this (since it owns the copyright to the music and lyrics)?

Read what Yankovic himself said in the story.

"The legality in this case is somewhat moot," Yankovic writes
when contacted via e-mail. "James Blunt could still let me put it on my album if
he really wanted to, but he obviously doesn't want to alienate his own record
company... and my label could release the parody without Atlantic's blessing,
but they don't really want to go to war with another label over this. So really,
it's more of a political matter than a legal matter."
Yankovic is absolutely correct. Although he does ask permission of artists, he need not. The infamous 2 Live Crew case states this principle. The case is called Campbell, aka Skyywalker, et al. v Acuff Rose Music, Inc. 510 U.S. 569 (1994). Many people don't remember 2 Live Crew's parody of "Oh, Pretty Woman," the Roy Orbison hit song. (That's, frankly, a good thing.)

Luthur Campbell, lead rapper of 2 Live Crew, argued that their version of the song was not copyright infringement under the Fair Use Doctrine, which is defined in U.S. Code Title 17, Chapter 1, Section 107. A basic reading (for now) is that re-recording is allowable for criticism or comment. The United States Supreme Court agreed, stating that when a new piece of art is created in the parody, it can be seen as comment or criticism of the original work.

The problem with the Supreme Court's opinion (in my opinion) is that it does not help to define what comment or criticism is. How much of the new work has to hearken back to the original work? Using Yankovic as an example, many of his parodies are funny, but do not really comment on the original work (except to use the same music), such as his first professionally recorded song "My Bologna," a parody of "My Sharona" by the Knacks. Compare that to "(This Song's Just) Six Words Long," parodying "Got My Mind Set on You," which was recorded by James Ray in 1962 and George Harrison in 1987. Weird Al's version dissects the trite love song genre the original song belongs to.

It is settled law that any parody is Fair Use under the United States Copyright Statute (U.S. Code Title 17). Unfortunately, it appears as if Yankovic and his team are not willing to duke it out. Thankfully, they've gone the route of just putting the song on the Internet. Enjoy!

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