Continuing to visit and update

Just as in the last update, I have been out visiting companies. This time, it was to Toy Fair 2011. I met with many interesting businesses of many different sizes. I also tried out many new toys - all were different. (And I did

I truly am excited about small business continuing to develop and innovate.

The development means that there are more ideas coming to fruition and that means more trademarks and copyrights to protect. It also means more advertising to be vetted. It is important to not forget these components to any business, especially in one where intellectual property and advertising is the business.

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Trademark infringement is high in China - not because of counterfeiting (which is a different issue) - but because of a lack of knowledge of the trademark process. I see it often in the United States, too.

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I am reminded that I spoke to someone recently who asked about a trademark registration. He said that he budgeted for placing the advertisement with a radio station. So, now, his company's trademark and advertisement were out in the ether, in use, but not vetted by an attorney. How does the company know that the mark does not infringe others or if the advertisement passes truthfulness, not misleading, and federal regulations?

***
Ford sues Ferrari for trademark infringement, as Ferrari planned to call its newest race car the F150. Ferrari backed off and proposes the use of "Ferrari F150 Italia" instead.

What I like here is the idea that more words in a trademark means that two marks that could be similar really are different: the target markets are different, the goods (while in the same industry) are different, and the marks themselves are different enough so that both can exist.

Traveleing and visiting

It is always a pleasure to visit new companies and see what new innovations are being made.

At Kravitz & Verna LLC, we do emphasize the need for companies to comply with federal regulations from different agencies in advertising. As our world grows more complex, so do regulations and so do the needs of companies to comply with advertising regulations. (As an aside, did you know California now has its own anti-spam statute, apart from the federal CANSPAM statute?)

It was with pleasure, then, that Robin and I visited the offices of CMPLY, whose website is cmp.ly, which is a start-up out of New York, helping companies follow federal compliance regulations and trying to make it easy. While no solution is black-and-white and every advertising situation has its own shades of grey, the conversations we had about advertising regulations schemes in today's world, full of social media and microsites were most enlightening and fulfilling.

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That said, I am looking forward to going to Toy Fair this year. It starts next week. I will be going there, and I hope to see anyone on this list in the toy industry at the convention. Let me know where you will be if you will be there. Just send me e-mail at averna@kravitzverna.com.

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Here is an interesting story about the federal government asking for the power to veto domain names. What troubles me here is the clash of "Security" versus the freedom of speech. This is a story to keep an eye on - especially if the federal government wishes to block any particular domain names.

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We should not be surprised, but Zynga, makes of the Farmville and Cityville games on Facebook, are enforcing trademark rights against anyone who uses "ville" in a similar use. We need to keep an eye out to see if Zynga is going to expand this use.

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I like meeting with someone at the very beginning of a project. This means I can lay out all the intellectual property issues at the beginning. What copyright issues are there? What trademark issues are there? I like developing the intellectual property plan at the beginning to reduce risk as much as possible.

Teleseminar - Trademark & More 101

On Saturday, January 22 at 12:00 PM Eastern, I will be hosting a teleseminar with Diane Kennedy, CPA on Trademarks & More 101.

Visit http://www.dianesseminars.com/ to sign up for this teleseminar. Yes, you can listen and participate from the comfort of your own home at your own phone.

Listen to what a trademark is, how they are registered, and how trademark law can affect your business.

Diane Kennedy, CPA, will be talking about tax consequences for your business.

We look forward to having you join us - virtually.

Sign up at http://www.dianesseminars.com/ to get the phone number to call in.

Trademark Seminar!

Announcing. . . Kravitz & Verna LLC.

And how best to announce a new law practice than to do it with a series of seminars.

Take a look at the first of this series here:
http://events.linkedin.com/Trademarks-Small-Business/pub/458307

Our first seminar is on Trademarks for Small Business. It will take place at North Jersey Federal Credit Union.

North Jersey Federal Credit Union is located at 711 Union Blvd., in Totowa, NJ.

We will start at 5:30 PM.

Topics covered: Tuesday, November 9 for the seminar on Trademarks.

• What is a trademark?

• Why do I need to register a trademark?

• What is the registration process like?

• What common mistakes are made in trademark applications?

• How can I enforce trademarks?

• How are trademarks assets?

Thursday, December 2 for the seminar on Advertising.

• How advertising is affected by the various areas of law

• Truthfulness and claims

• Creation, Production, Placement and what agreements are needed with agencies

• Best business practices

Tuesday, January 11 for the seminar on Licensing and Copyrights.

• What is a copyright?

• What do I need to register a copyright?

• Why are copyrights important to my business?

• What is a licensing agreement? What can I license?

• What is a royalty payment? How can I structure them?

Tuesday, February 8 for the seminar on Promotion law.

• Contests and Sweepstakes Regulation

• How these regulations affect business

http://events.linkedin.com/Trademarks-Small-Business/pub/458307

Video killed the radio star

For those of you who are fans of my law practice on Facebook, you have been seeing video of me discussing various areas of law that I practice.

You can find all the videos here:

http://www.youtube.com/avernalawfirm

But, for today, I do want to focus on two videos specifically. The first one is about having a trademark search performed. http://www.youtube.com/watch?v=HDeW46gNsvk

I received a phone call from a client recently about a trademark application that is stuck for multiple reasons. It might be most cost-effective to restart. That is not the answer any client wants to hear with a mark already used in commerce. But use = registration. I want everyone to do it right from the beginning. Let us start with the trademark search and the advice that comes from the search is invaluable.

The other video is about the areas of law you might encounter on social media: http://www.youtube.com/watch?v=qf0Q_44b8qI

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New Teleseminar! June 16 a 9 PM Eastern with Diane Kennedy, CPA. Diane and I will be speaking about How to Create and Build Intellectual Property Value. Register here to get the phone numbers to dial in:

http://www.dianesseminars.com/

Register now! I look forward to seeing you there on Wednesday!

The Four Items Most People Get Wrong in a Trademark Application

Many business owners believe they can save money by doing a Federal trademark application. But what they do not know are the pitfalls in filing the application themselves.

1. Incorrect Trademark. Yes, this might seem very basic – but many times, business owners register what they think their mark is instead of registering the mark that the business is using.

2. Incorrect Owner. People and corporations are different legal entities. Very often, a small business owner puts himself or herself as the owner of the trademark when it is the corporation who owns and uses the trademark.

3. Incorrect Date of First Use. What is the date of first use? It is the date that the trademark was used on any material related to the goods or services your company sells.

4. Incorrect Description of the Goods and Services. As a part of filing for a Federal trademark, the application must list the goods and services that a mark represents. This list must be complete. If the mark is not used in conjunction with any of the goods or services listed, then the registration is open to attack.

If any of these items in a trademark application is incorrect, then the trademark application or registration is subject to cancellation.

Fraud Upon the United States Patent and Trademark Office can be triggered by even an innocent mistake. If a trademark application is fraudulent, the trademark application or registration can be cancelled.

See an attorney to discuss all aspects of a trademark application – from what the mark really is, to who the owner is, to the first date of use, to the goods and services it represents.

Anthony M. Verna III, Esq.

Law Offices of Anthony Verna

law@nyctrademarks.com

(917)348-0108

Would you like to see this as a PDF to save and print? http://nyctrademarks.com/temp/wrong.pdf

You must follow the system.

Good day, everyone!

I was in Los Angeles last week for a seminar, and as soon as I returned to Newark, NJ, the cold weather hit me.

(Though I was staying in Santa Monica, where it is colder because of the ocean.)

Last night was fun, as my Phillies played - and won - in the first game of the National League Championship Series. Today's game is a 4 PM Eastern start, so it looks like baseball fans have to cut the work day short to watch the early game. That's the conundrum for baseball - the 8 PM playoff games end late, but the early games do start early. So, what is baseball to do? It, so far, has been putting the Yankees-Angels game late - New York and L.A. - as it knows the Yankees get ratings. But it still inconveniences a lot of people who are fans of the Phillies and Dodgers (especially a 1 PM Pacific start on a weekday).

Lots of my clients have conundrums, too.

• What do I do when my trademark is registered?
• Do I need to continue with the trademark opposition proceeding that has been filed against me?
• Do I need to register? (You already know my thoughts on this from being loyal readers.)

It's here where I'd like to introduce a few new items:
1) The Intellectual Property Security System. There are four simple steps to the system - Review, Search, Register and Monitor. I can lead you through all these steps to help you and your company protect its intellectual property better. Call me at 212-736-0007 x4 and ask me about the Intellectual Property Security System.

2) A part of the system is our Intellectual Property Self Review kit. It's a fantastic kit that is developed for companies to help re-focus and understand their intellectual property. Companies, with the review kit, will be able to clearly understand what intellectual property they have and the importance to register each piece of intellectual property. This is a kit with a $600 value - it is what we sell it for - but because you are all loyal readers of the blog and newsletter, I am willing to give it to you at no charge. Just let me know that you read the blog or newsletter. Call me at 212-736-0007 x4 and ask me about your free copy of the Intellectual Property Self Review Kit. We'll mail it out to you.

*****

Do not forget to become a fan on Facebook: http://www.facebook.com/anthonyvernalaw

Do not forget to follow me on Twitter: http://twitter.com/avernalaw

*****

Recently, a judge in New Jersey ruled for a company in a trademark infringement lawsuit and awarded $570,000. What that tells me is that there is an importance for the last step in the Intellectual Property Security System - Monitoring. Many companies believe that it is acceptable to register the IP and go on with life. In fact, that is only a part of the solution.

Intellectual Property owners must monitor their marks in order to see how it is being used in our large, complex modern world. Is it on the Internet? Is someone speaking poorly of those marks? Is someone co-opting your mark? If you are not monitoring your trademarks, you do not know and you miss out on the ability to enforce the rights you are given by registering your mark that is in use.

*****

In the Republic of Ireland, the Church of Scientology lost a trademark battle to a company called Prosperity Recruitment, which is an advertising recruitment agency.

I find it funny because of one of the quotations: Prosperity Director, Gary Mullan said: “It is amusing that an Irish recruitment company’s services could be considered to be a close match to the goods and ’services’ described by the Scientologists”.

How to set up your IP

In the past couple episodes of ABC's "Shark Tank" (which itself is one version of a show called "Dragon's Den" in most countries), intellectual property has played a part. (Once again, the premise of the reality show is that businesspeople show their wares to self-made entrepreneurs who decide if they want to invest in the small business.)

One of the business men (who calls himself "Cactus Jack") decided to show all of his patents to the panel - ostensibly proving his value as an inventor and as a businessman who can make money on his inventions. One question I have been asked (though I do not practice patent law) is, "What percentage of patents make money?" The answer is hard-to-impossible to find, but the answer that I hear all the time is 5%. Where does that number come from? I wish I knew - I can't find it. But, needless to say, the point is that if the businesspeople behind the intellectual property are bad, then the intellectual property itself is bad. Now, Cactus Jack said he made $7 million on one product, which I think proves the point.

Another episode featured two women with a wonderful playpen cover. The issue that came out during the deal is that the patent was not a part of the business. The patent owners were the two women and the ex-husband of one of them. The problem there is that a person is a legal entity - but so is a corporation. So if a business is using the patent without an assignment or license from the owners, the business is technically infringing the patent.

This is something I see all the time. When a client comes to me anew, I always have to ask what the business plan is. How does the client see the intellectual property? When I am thrust in the middle of an issue, and I see that intellectual property at the USPTO is in the name of the owner, but not the corporation, I then have more issues to deal with.

1. Who is my client?
2. What assignments do I need to create and have executed?
3. What side of those assignments am I allowed to be on?

So, the IP needs to be a part of the business.

If you're a current client of mine, I've made sure that your IP is a part of the business. That's only correct.

How is your IP set up? Is all your IP registered? If you have a question, send me one at law@nyctrademarks.com.

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There seems to be a recent change in the definition of contributory trademark infringement. And I say "seems" because I am not sure of all the ramifications of a recent ruling. Louis Vuitton (which is a company that defends its IP) has sued some companies that host parked web pages. A parked page is one that only lists links to other companies on a domain name that might be popular for one reason or another (for example, a misspelling).

But, on second thought, maybe there's nothing new here - except the large amount of damages. Louis Vuitton alerted the company and the company with the parked pages still had infringing websites. It is the job of any company who is alerted to trademark infringement to not contribute to it.

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A trademark client of mine was featured in the New York Daily News recently, and you can click here for that article.

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Don't forget to become a fan of mine on Facebook at http://facebook.com/anthonyvernalaw and follow me on Twitter at http://twitter.com/avernalaw for daily updates and discussions on the world of intellectual property and entertainment law.

Housekeeping!

I have some housekeeping to take care of and will write something of substance later on this week.

I have joined the law firm of Weiss Imbesi PLLC. You can view their website at http://weissimbesi.com for more information. For those of you who are clients of mine, this changes nothing. I will soon contact you personally to discuss this. What it means for everyone is that we can help you with a greater range of legal needs - from intellectual property (cradle-to-grave intellectual property protection) to commercial litigation to real estate law to employment law, we can help you.

Don't hesitate to contact me at law@nyctrademarks.com for more information on Weiss Imbesi PLLC.

We are holding a live trademark seminar to mark my beginning there. For those of you in the New York City area, please come! Please forward this to all your business contacts, too!

Trademark 101: Basics of Trademark Registration for Businesses

Weiss Imbesi PLLC

http://weissimbesi.com

http://nyctrademarks.com

http://nyccopyrights.com

Join Weiss Imbesi PLLC for a seminar on the Basics of Trademark Registration for Businesses. Learn what a trademark is, how the registration process works, the importance for registration, and keys that an attorney looks for in clients’ trademarks.

We will have drinks and light snacks at a convenient time after work.

Join us. We will do some networking for the first 15 minutes and then start the seminar.

When: August 10, 2009 5:30 PM – 7:00 PM

Where: Weiss Imbesi PLLC

462 Seventh Avenue, 12th Floor

New York, NY 10018

Cost: $50 for the entire seminar

RSVP: http://www.weissimbesi.com/pay.htm

Questions? law@nyctrademarks.com

Turn your TM into ®

Why Register?

The web seminars that I have been doing have been nothing less than fantastic.

One question that someone always asks is, "Why should I register my trademarks or copyrights?"

There are a few reasons for registering.

1. Public notice. In both a trademark and a copyright registration certificate, the owner of the intellectual property is listed. Trademark certificates are filed with the United States Patent and Trademark Office. Copyright certificates are filed with the Library of Congress.
2. Public descriptions. In a trademark certificate, the goods and services are listed. In a copyright certificate, a brief description of the work is filed, along with two copies of the work itself. The owner of the intellectual property is also listed.
3. Geography. All registrations are good in all fifty states and all territories of the United States.
   
4. Barriers to lawsuits. If a trademark is not registered, it is considered a common law trademark. The goods/services and geography of the mark must be argued in court if there is infringement. No infringement lawsuit can be filed on a copyright that is not registered. Should there be infringement before registration of a copyright, the copyright owner loses damages (statutory damages up to $150,000 and attorney's fees) and is only allowed to collect actual damages for the copyright infringement.
5. The power of federal law to help with damages in any intellectual property lawsuit comes only with registration.
   
6. Ease of cataloging. This is a thought that not many people have. If a mark or work is registered, then there is a number. Should the mark or work be sold or licensed, then it is easy to state in a contract what the number is and what the property is.

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People also ask me for examples in different industries. Here are a few.

• Syrup manufacturers are gearing up for a trademark dispute: http://www.nola.com/news/index.ssf/2009/06/snowball_wars.html
• Tony LaRussa (manager of the St. Louis Cardinals) and Twitter settle their trademark dispute: http://www.stltoday.com/blogzone/bird-land/bird-land/2009/06/tony-la-russa-and-twitter-settle-lawsuit/
• Intel and Psion settle their trademark dispute: http://jkontherun.com/2009/06/01/psion-intel-settle-netbook-trademark-infringement-case/
• The Naked Cowboy (owner of many trademarks) sues a station for trademark infringement: http://tinyurl.com/lldt3l

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New Webinar on Thursday afternoon!

This will be a webinar on copyright and trademark law for small businesses. Learn what a trademark is. Learn what a copyright is. This is going to be a primer so that you're familiar with the terms and with the differences between these areas of intellectual property. Don't hesitate to protect your trademarks and copyrights!

Title: Copyright and Trademark Law for Small Businesses

Date: Thursday, June 11, 2009

Time: 3:00 PM - 4:00 PM EDT

After registering you will receive a confirmation email containing information about joining the Webinar.

System Requirements
PC-based attendees
Required: Windows® 2000, XP Home, XP Pro, 2003 Server, Vista

Macintosh®-based attendees
Required: Mac OS® X 10.4 (Tiger®) or newer

Space is limited.
Reserve your Webinar seat now at:
https://www2.gotomeeting.com/register/268310634

When Areas of Law Cross

There is an interesting lawsuit recently filed by Ozzy Osbourne against former fellow band member Tony Iommi over the Black Sabbath band name.

BLACK SABBATH is a registered trademark number 2399391. Iommi registered it back in 2000.

There are a couple issues in this situation that do not seem to be covered in any article. How long has Ozbourne not been using the name (which is briefly touched upon elsewhere)? Was there any agreement (doubtful) when band members broke up? And, what do state laws have to say about bands?

Yes, state laws. There are many states who are protecting band names as long as there is at least one member of the original group in the current group.

In this situation, I do have to wonder about Osbourne's claim since he has not been using the name of Black Sabbath himself for many years and now suddenly he wants to reclaim the rights to the mark. Federal law should prevail over state law, but that issue is never clear-cut.


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The web seminars have been popular, so I will continue to do them.


Copyright and Trademark Law for Small Businesses

Join us for a Webinar on June 5

Space is limited.
Reserve your Webinar seat now at:
https://www2.gotomeeting.com/register/346743610

This will be a webinar on copyright and trademark law for small businesses. Learn what a trademark is. Learn what a copyright is. This is going to be a primer so that you're familiar with the terms and with the differences between these areas of intellectual property. Don't hesitate to protect your trademarks and copyrights!

Title: Copyright and Trademark Law for Small Businesses

Date: Friday, June 5, 2009

Time: 11:00 AM - 12:00 PM EDT


After registering you will receive a confirmation email containing information about joining the Webinar.

System Requirements
PC-based attendees
Required: Windows® 2000, XP Home, XP Pro, 2003 Server, Vista

Macintosh®-based attendees
Required: Mac OS® X 10.4 (Tiger®) or newer


Space is limited.
Reserve your Webinar seat now at:
https://www2.gotomeeting.com/register/346743610

Another web seminar

Due to the success of this week's web seminar, and because I received some requests from people to do it again on a different day, I will be doing one on Friday, May 22 at noon (EDT).

1. Point your web browser here:
https://www2.gotomeeting.com/join/647724971

2. Use your microphone and speakers (VoIP) - a headset is recommended.


Or, call in using your telephone.

Dial 218-844-4920
Access Code: 647-724-971
Audio PIN: Shown after joining the meeting

Meeting ID: 647-724-971

Once again, we'll go over the basics of trademark and copyright law for small business.

Seminar via Skype

Tomorrow, Thursday April 23rd, 2009 at 4 PM EDT, I will be doing a trademark and copyright law seminar for small businesses and artists via Skype. It will be in the form of a conference call. My Skype name is avernalaw, so add me to your list now and be online before 4 PM EDT tomorrow.

Topics covered:

• What is a trademark.
• How the trademark registration process works.
• What makes a good, strong trademark.
• What to do after a trademark is registered.
• What is a copyright.
• How a copyrighted work is used in other works properly and improperly.
• And many more.

Just log in to Skype, add avernalaw to your list, and I'll bring you into the conference call at 4 PM EDT when you log in.

A video about my website.

Here is a video about the website for the Law Firm of Anthony Verna.  I hope that if you have any questions on how to use my website, this video will help you greatly:

Ch-ch-ch-changes

The NBA's Seattle Supersonics have moved to Oklahoma City and will play there from now on. The team's new name is not yet known. However, the NBA filed the applications for six different trademarks with the U.S. Patent and Trademark Office. Those names include Barons, Bison, Energy, Marshalls, Thunder and Wind.

What does this mean?

Apart from the name being chosen from one of these selections, not much. Filing a trademark application at this point in time only means that the NBA has a bona fide intent to use the mark in interstate commerce. This does not mean that the NBA is using the mark and, in fact, the NBA is unable to own a registered trademark until the mark is used in interstate commerce (and can provide proof). As you can guess, in trademark law parlance, this is called an intent-to-use trademark application or a 1(b) application, after the applicable section of law.

What makes this a little difficult to swallow is that the NBA does NOT have a bona fide intent to use five of the six trademark applications. Only one of those names will be chosen.

The U.S. Patent and Trademark Office does not review intent-to-use trademark applications for their good faith. Still, I am troubled because the attorneys for the NBA know that only one mark will be used and five of those six will not be used.

Housework. And sex keeps selling (but you knew that).

I did receive a few e-mails about the last entry, so a mailbag will be the next entry to everyone on the mailing list.

In the meanwhile, the blog (oh, how I hate that word) did receive a few accolades and I would like to acknowledge them now.

LexisNexis recognized this blog in its Trademark and Copyright Law Centers. Just look for this blog in the "Top Blog" page just off the centers' main web pages.

The ABA Journal's website has included this blog in its listings.

This blog can also be found on Justia.com's listing of blogs.

Thank you everyone.

*****

There are some sexy trademark battles, after all.

Victoria's Secret is fighting Sexy Hair Concepts LLC over - yes - the word sexy. The Trademark Trial and Appeal Board ruled that Victoria's Secret's use of the trademark "So Sexy" for its own hair care line causes consumer confusion with Sexy Hair Concepts LLC, which uses the word "sexy" in its own family of trademarks for haircare.

Victoria's Secret has asked a federal court to review the decision because of a study showing that there is not a distinctive association between the word "sexy" and haircare products with Sexy Hair Concepts LLC.

I am in the wrong market (being male, I think, eliminates me from using any hair care products described as "sexy"), but Sexy Hair Concepts does seem to have created a multi-million dollar business (its own briefs filed with the Trademark Trial and Appeal Board state that the company's sales went from $15 million in 2001 to $23 million in 2003).

So, the company has established a trademark that is not descriptive ("sexy" does not describe something intrinsic to hair products - only how the company hopes that the consumer's hair looks after using the products), has strong sales and many advertising campaigns to tie the phrase "Sexy Hair" to its company. Doesn't it - effectively - have the rights to the word "sexy" in hair care?

The goods are similar (hair care products). They are sold in similar channels (with other hair care products). The marks are similar enough (they both have the same main, dominant word - "sexy"). These are the basic reasons that the TTAB upheld the "Sexy Hair" family of marks to stand as strong marks, but Victoria's Secret "So Sexy" marks in the same industry are not allowed.

I do not expect a federal court to overturn this decision.

For all the readers, since the next post will be a mailbag, can you think of a time when the same trademark exists in more than one product?

Broken Dreams

Imagine that you are a big fan of a presidential candidate and that you wanted to show your support for this presidential candidate. What would you do to show that you are a big supporter? Wear buttons? T-shirts? Show up at rallies? How about print t-shirts with the candidate's name on them in the fonts of various baseball teams.

There was a website set up by a Barack Obama supporter called obamaofdreams.com that did just that. On the site, various t-shirts came in the styles of Major League Baseball teams. According to the creator of the site, Morris Levin (scroll down to see the reference), “One of my underlying goals is to marry Obama with mainstream culture through baseball, and I’d like to think that everyone here can appreciate the results, regardless of your political affiliation."

The website, however, is now closed.

What happened? Quite simply, an attorney contacted Levin contending that Levin violated the league's trademarks.

Before you continue reading, please click on the last link to take you to thesmokinggun.com's article on the site (it also has a few examples of the t-shirts). Did you read it? Good.

Thesmokinggun.com brings up two different thoughts without probably realizing it: 1) distinctiveness of trademarks and 2) transformation of trademarks.

Both ideas in trademark law underscore the biggest philosophy - consumer confusion. Consumers must be able to understand the source of goods and services and the quality of those goods or services - else trademarks fail as a system.

Here, if Levin's t-shirts are so transformative that consumers can tell that one of the t-shirts does not come from a baseball team - even if the marks used are so distinct - then it can be argued that his marks do not infringe or dilute the trademarks of baseball teams. On Levin's side is that certainly, baseball teams do not routinely print t-shirts of political figures in their own fonts. On baseball's side is that the marks are so distinct that those fonts are only representative as a source of goods from a baseball team. Plus, baseball teams make t-shirts (as well as many other kinds of clothing). It's a difficult argument, but there arguments for both sides.

One other issue - is a font a trademark? Generally, I would answer that a font is not a trademark. However, many of these teams have operated for many years using the same font and the same (or similar) colors. At some point, those fonts are associated with that team and with that team only.

Wintry Mix

Good afternoon, everyone. I am recovering from Toy Fair last week and another winter illness that hit me this weekend. I hope everyone is in good health!

The College Board is suing a company called Karen Dillard's College Prep that has its own review courses for the SAT and PSAT, claiming that some of the questions in the review course are active questions on the SAT and PSAT. Those claims would mean that KDCP is infringing the College Board's copyright on those questions.

This reminded me of PMBR (now partnered with Kaplan), one of the companies that has a review course for the bar exam. PMBR's specialty is aiding in getting a better score on the Multistate Bar Exam, the multiple choice test that is a part of most states' bar exams. PMBR finally lost a case in 2006 in which copyright infringement was alleged by the National Conference of Bar Examiners, who writes the Multistate Bar Exam. PMBR was fined almost $12 million. Wow.

The standardized-review-test industry is in a difficult position. If a company exists, it has to have a mix of its own questions (which may or may not be good enough) and questions that have been used on exams (they're good enough because they were on exams). If I remember correctly - and I can find no outside source to confirm this - one of the founders of PMBR claimed to have a photographic memory (do any lawyers who took this course remember those claims) and that PMBR had been sued before for copyright infringement (but no success were in those suits). It's a tough balance, having to rely upon a template in an industry that comes from another.

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An attorney is trying to register a trademark. That's not unusual. His mark? "Cyberlaw." Seriously.

I find this to be rather egregious. After all, I took a class in law school called Cyberlaw that was a mix of law and technology. It's easy to find a Wikipedia page on the topic. Even though the word was registered as a trademark in 1995, it expired in 2000 and today it must be considered a generic term that's not right for a trademark registration in legal services.


****

I look forward to reading more about the case a man filed in Maryland, claiming that the Baltimore Ravens used the logo he created. The Ravens have claimed that they never saw the logo and then changed their logo when they were made aware of the possibly infringing logo.

We're back!

After months of technical issues, we're back. The problem I learned was that when Google (which sends out the e-mails) and Blogger (which hosts this log on the web) merged, the accounts merged as well and it took forever to make them separated. But all is back to normal! I hope to send out a biweekly update, as done in the past.

The NFL recently backed off its attempt to register a trademark in the phrase "The Big Game." Why? There are several reasons. Although I disagree with the use of the word "insanity" in this article, mainly because the law did work and the correct results were seen, sports and intellectual property continue to intersect more and more.

Why did the NFL try to register "The Big Game" as a trademark? Because it ruthlessly protects its trademark of "Super Bowl" from being used outside licensed properties. (Intent to use U.S. Serial No. 78804122 ).

And this is something we are all familiar with. How many advertisements can we think in our head come from electronics stores asking us to buy a HDTV so that we can watch THE BIG GAME at home with the best set available? Also, don't hesitate to look at a page on Wikipedia, which shows other uses of the phrase "The Big Game."

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In some copyright news, some people believe that Prince is being unfair because Universal Music Group is responsible for taking down a home video on YouTube posted by a mother of her infant being seen dancing to a Prince song.

Section 512 of the Copyright statute discusses the ability of a copyright owner to ask that infringing material be taken down - especially from a site whose content is user-generated. Fair use - again, the ability to use small clips of copyrighted works - would still apply. Here? It does seem as if the song is being fairly used in the home video (the sound quality is awful as it is a recording of a home system through the air, it is not the entire song, the point of the video is the kid moving around - not the song). Google, do not forget, bought YouTube for $1.65 billion - so there are lots of dollars floating around the ads on a YouTube clip, even one that might contain the fair use of a copyrighted work.

In short, if a client came to me asking what my rights were to a clip that was on YouTube, then I would have to speak to my client for a long time. It's a touchy subject that requires a lot of balance. One musician's copyright violation is another musician's viral marketing campaign.

Mailbag!

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.