Effective February 1, 2012, the separate icons for TARR and TDR will be merged on the Trademarks Home Page, so that only one icon for TSDR will display. From this icon, an “interim” page will be accessed, containing the link to TSDR 1.0. Please be aware that this interim page has been re-ordered such that the links to “old” TARR and TDR now appear at the BOTTOM of the page, at the “NOTE.”

LegalSherpa was created by lawyers to provide timely, cost-effective and professional trademark and copyright services at your fingertips. An entrepreneur’s economical alternative to services offered by law firms! After completing our easy to use questionnaire, a LegalSherpa professional will readily prepare and file your federal trademark and/or copyright application.

Protect one of the most important assets of your business by registering your trademark with the United States Patent & Trademark Office. Your business name, logo, and slogans need protection! File your low cost trademark application now by clicking on the link below.

Register Your Trademark Now!!

© Jovi Federici 2011

A registered trademark notice (®) provides important benefits to any business. Failure to properly register a trademark, and failure to provide notice, may have serious, negative consequences. Nevertheless, many businesses must ask the question of whether to register a trademark considering the importance of providing notice. The answer should become clear once you understand the benefits of trademark notice and the implications of failing to properly register your trademark.

The term “notice” has a special meaning in the law. The term “actual notice” means that an individual was actually aware of an existing trademark. Proving actual notice can be tricky. Unless a defendant admits to having had actual notice, it may be difficult, if not impossible, to prove actual notice until the time of service of a complaint upon the defendant.

The term “constructive notice” means that an individual should have been aware of the registered trademark, regardless of whether the individual was ever actually aware. When a defendant is said to have been on constructive notice, a court will infer that the defendant was aware of the trademark. This relieves the plaintiff of the burden of proving actual notice. Only a registered trademark provides constructive notice.

Failure to provide notice may limit a business’s ability to enforce protection over its most important business asset, its trademark. Without a registered trademark, a potential damage award may be limited: The plaintiff may only seek damages from the time the alleged infringement was brought to the defendant’s attention. By then it is likely that substantial damage to the plaintiff’s business, due to tarnishing of your trademark and good will, has already been done. Enforcement may become cost prohibitive due to the inability to recover the substantial portion of damages.

Other implications of not registering and providing notice may include the loss of the right to use your own trademark in another geographical area. In the case of Dawn Donut v. Hart’s Food Stores, 267 F. 2d 358, the court held that since Dawn Donut had registered its trademark, constructive notice would allow Dawn Donut to enjoin Hart’s Food Company from using the “Dawn” trademark should Dawn Donut ever expand its retail activities into Hart’s geographical area. Had Dawn failed to register, however, Hart may have been able to continue to sell “Dawn” donuts in a six county area of New York indefinitely.

Some businesses rely on unregistered trademark notice symbols (TM or SM), mistakenly thinking that they are receiving the protection of the statute. Only registered trademarks receive the statute’s protection. Moreover, indicating an unregistered trademark may tip off competitors that your trademark is not registered and send a message to the increasingly savvy consumer that your business does not take protection of its brand identity seriously. Using an unregistered trademark symbol is appropriate in some circumstances but it should never be a substitute for the properly registered mark.

Using an unregistered trademark notice symbol does not deny a plaintiff from seeking relief from trademark infringement. An injunction may be won and certain business torts such as “passing off” may be brought. The benefit of registration, however, is receiving a streamlined process for obtaining relief so that plaintiffs avoid lengthy, expensive trials.

A properly registered trademark provides constructive notice to potential infringers that your intellectual property is protected; you won’t have to prove that the defendant actually knew about the trademark. Furthermore, plaintiff may seek damages from the initial time of the alleged infringement. That means a shot at a full recovery from the damage that has been done to the business’s brand identity. The mark also shows the public that your brand image is unique, authentic, and genuine.

Registering a trademark with the U.S. Patent & Trademark Office can be a daunting task. Mistakes along the way will raise the cost of registration. Although the U.S. Patent & Trademark Office now provides a “do-it-yourself” Internet portal, it is still important to utilize the expertise of seasoned professionals in order to avoid certain pitfalls. For example, the application for a trademark that is similar to an existing registered trademark will likely be denied. Hire a specialist to conduct a proper trademark search in order to avoid having to resubmit or amend your application.

There are many lessons that the businessperson need not learn the hard way when it comes to trademark registration. For example, the improper use of registered trademark notice during the application process can cause the application to be denied. Moreover, posting the registered trademark notice (®) before the application has been fully processed and accepted may result in consumers’ claims of false advertising.

Use the trademark notice symbol consistently. The most severe consequence of failure to use a trademark is trademark abandonment. Perhaps the most famous example of this is the case of Major League Baseball v. Denarius, 817 F. Supp. 1103, in which the Los Angeles Dodgers sued the Brooklyn Dodgers for trademark infringement. The court held that LA’s failure to use the “Dodgers” mark between 1958 and 1981 constituted an abandonment of that mark. Generally, abandonment can occur in as little as three consecutive years of nonuse.

A carefully prepared intellectual property protection plan avails the business of the benefits of trademark notice while managing cost and minimizing risks. Online services like LegalSherpa offer registration and trademark search services for as low as $99. The greater cost is the registration fee at the Patent & Trademark Office ($325). These costs are nominal compared to the benefits of constructive notice and the presumption of the right to exclusive use.

One rule to follow is that if your business is doing well, making money, gaining a competitive advantage, you can be sure that there are others out there who are willing and ready to copy what brings you success. When success is based on your intellectual property, the life of your business will turn on your ability to protect your intellectual property and guard against the inevitable throngs of potential infringers. Registering your trademark is affordable and hassle-free with online legal services offered today. Register your trademark and display the trademark notice consistentl

© 2011 Kenya L. Williams, Esq.

What is Copyright Notice?

Notice, as it pertains to copyrights in the United States, entails placing the symbol © (or the word “Copyright,” or the abbreviation “Copr.”), the year of first publication, and the name of the copyright owner, whether it be the original author or one to whom the copyright has been assigned. The work must be an original work of authorship which is fixed in a tangible medium of expression. In other words, the authored work must be in tangible form. One cannot copyright an idea, a thought, or other intangible thing.

Copyright Law in the United States: Then

Effective January 1, 1978, the 1976 Copyright Act, codified as Title 17 of the United States Code, required all copyrighted works to provide notice of that copyright. Prior to the enactment of the 1976 Copyright Act, works published under the copyright owner’s authority without proper copyright notice resulted in the loss of copyright protection in the U.S. Later, the 1988 Berne Convention Implementation Act amended the 1976 Copyright Act to make copyright notice optional for works published on or after March 1, 1989.

Copyright Law Outside the United States

To protect works created outside the U.S., in countries that do not require the same copyright notice required in the U.S., the Uruguay Round Agreements Act (URAA) of 1994 automatically restored copyright for some foreign works that were placed in the public domain due to lack of notice or failure to comply with other legal requirements. A work is considered in the public domain when there is no copyright notice provided, where required, or other legal requirements are not satisfied to establish a legitimate copyright. Therefore, such works could be freely appropriated by the public without repercussions.

Copyright Law in the United States: Now

Currently, notice is not officially required in the U.S. for works created on or after March 1, 1989, however it is a good idea to do so in order to avoid having to engage in expensive litigation to prove authorship and get damages. All authors are strongly encouraged to place copyright notice on all copies of any work distributed to the public. This avoids confusion and can save the author time and money later. If it is clear who created a particular work and when, there is no excuse for failure to obtain permission from the rightful author prior to using the work or derivatives thereof. Potential copyright infringers enter at their own risk when there is copyright notice, however, with no notice, the copyright owner places himself at risk of having his creation appropriated inadvertently.

What Does the Use of Copyright Notice Mean?

By placing the © symbol, the year of first publication, and the author’s name on the work, the rightful author ensures that the public will be aware that the work is protected by copyright. Authors have the ability to register their works with the U.S. Copyright Office, however this formality is no longer required in the U.S. Still, if the author ever must engage in litigation to prove ownership of the copyright, registration with the U.S. Copyright Office certainly makes this process much easier. Still, even without official U.S. Copyright Office registration, if there is proper notice, the so-called “innocent infringement defense” will not completely absolve the alleged infringer of fault.

Repercussions for Failure to Include Proper Copyright Notice

Failure of proper copyright notice can conceivably be remedied within five years of publication under the 1976 Copyright Act. Not doing so within the five-year time frame could eliminate copyright protection forever in the U.S., without the possibility of restoration.
On the other hand, under the Berne Convention, since notice on works published on or after March 1, 1989 was considered optional, failure to provide notice did not place the work in the public domain, but the “innocent infringement defense” could be used to reduce damages for copyright infringement.

What is the Moral of the Story?

In order to fully protect an original work of authorship fixed in a tangible medium of expression, and to be able to receive all applicable remedies and damages for copyright infringement should it occur, an author should provide notice of the copyright by placing ©, the year of first publication, and the author’s name on the work, or in close enough proximity to the work, such that a potential infringer is well aware of the fact that the materials are copyrighted. Not doing so will put the author at risk of having the work copied or stolen, and to prove actual authorship may be (and probably will be) an expensive and time-consuming road to travel.

© 2011 Craig Ginsberg

Introduction
What is a copyright? What protections does a creator of intellectual property obtain by filing a copyright? How does a creator of intellectual property obtain copyright protection? What types of intellectual property may be protected by copyright law? What are the limitations to copyright protection of intellectual property? These are all simple questions with complex answers. There are various legal, practical, creative, and financial issues that surround each of theses questions and the purpose of this article is to answer each of these questions, and will serve as a short, simple guide to the basics and fundamentals of copyright law in the United States.

What is a copyright?

According to the United States’ Copyright Act, a copyright is a protection of intellectual property that is “[an] original works of authorship, including literary, dramatic, musical, artistic, and certain other intellectual works.” One obtains copyright protection of their intellectual property under the United States copyright laws at the moment of the creation of the intellectual property, and lasts for seventy years past the death of the author, if the work was created after January 1, 1978.

How does one obtain copyright protection?

Contrary to popular belief, in order to receive intellectual property protection for creative works, formal copyright registration is not required under United States law. To ensure complete copyright protection, however, copyright owners should use the copyright registration process. The registration process gives formal notice to any potential competing claimants of the creator’s creation of a copyright protection in their intellectual property. The copyright registration process may be completed in one of the following three ways:

1. Online registration through the electronic Copyright Office, which, according to the United States Copyright Office, is the preferred method for literary works, visual arts works, performing arts works, motion pictures, and sound recordings;
2. Filing an online form entitled Form CO, which is a bar-scanned form available through the Copyright Office’s web site, to be completed online and sent to the Copyright Office; and
3. Registration through various paper forms, depending on the subject of the registration. For example, one would use Form PA to register performing arts works with the Copyright Office.

What types of intellectual property may be protected by copyright law?

As stated above, according to the United States Copyright Act, copyright protection may be provided to any intellectual property that are “original works of authorship, including literary, dramatic, musical, artistic, and certain other intellectual works.” There are various copyright protections afforded to a creator of intellectual property that depend on the nature of the work created. For example, the creator of a play, ballad, dance, song, theatrical performance, movie, or related work gives the creator of that intellectual property the right to display their work to the public. In addition, intellectual property may receive copyright protection as a “work made for hire” if the work is prepared by an employee in the scope of his or her employment.
These are only some examples of copyright-protected works and is not intended to be an exhaustive summary. All variations of intellectual property that are subject to copyright protection are enumerated in The Copyright Act.

What are the limitations to copyright protection of intellectual property?

There are several limitations to copyright protection of intellectual property. A major statutory limitation of copyright protection is known as the fair use doctrine. According to the fair use doctrine, copying or imitating copyright-protected intellectual property without compensating the creator or obtaining the creator’s consent does not always necessarily amount to copyright infringement. Courts routinely apply several statutory factors in determining whether a use of copyright-protected intellectual property constitutes a fair use. These factors, according to the Copyright Act include:

1. the purpose and character of the use;
2. the nature of the copyrighted work;
3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
4. the effect of the use upon the potential market for or value of the copyrighted work.

Another major limitation of copyright protection is that mere ownership of a copy of intellectual property, such as a book, manuscript, or painting does not give the transferee legal copyright protection if the intellectual property has already obtained copyright protection. Many of these works are identified as copyright-protected works by a symbol of ©.
Lastly, another limitation of copyright protection is that although minors may obtain copyright-protected rights in intellectual property, state law may regulate the business dealings involving minors. The Copyright Act, a federal law, does not automatically preempt state law as it pertains to business dealings involving minors.

Conclusion

A copyright is a protection of intellectual property for an author’s “original work,” which include many mediums, such as a painting, motion picture, song, dance, drawing, or art. One may obtain registration of copyright protection through one of three ways, either

1. online registration
2. registration of Form CO, or
3. submission of various paper forms. According to the United States Copyright Act, intellectual property that is “[an] original works of authorship, including literary, dramatic, musical, artistic, and certain other intellectual works” is subject to copyright protection.

As discussed above, there are unique copyright issues that surround the various types of intellectual property. Lastly, there are several limitations to the protections of the Copyright Act, such as the fair use doctrine.

© 2011 John Cornell Fuller

In a recent complaint, reality television star Kim Kardashian alleged that clothing chain Old Navy violated her right of publicity. Specifically, she contends that Old Navy, and its parent company, the Gap, violated her publicity rights by producing a television commercial where a Kardashian look-alike sings about looking ‘cute’ while she goes about her daily life. Enjoying a rise to popularity as a reality star, however, may have left Kardashian without the clearly visible elements of persona that many celebrities have used to defend their publicity rights in the past.

The Right of Publicity

The right of publicity protects an individual’s control over the commercial use of their name, image and likeness. It is, at its core, a property right based on the idea that individuals are entitled to any financial benefits their persona and its goodwill (i.e., their personal ‘brand’) can generate. Though states vary greatly in their recognition and definition of the right; California, where the lawsuit was filed, offers broad protection under common law and an expansive right of publicity statute. California’s high level of protection often tips the scales in favor celebrities seeking to defend their publicity rights as long as they can demonstrate that their persona has been used without consent.

Kardashian’s complaint makes its clear that she did not give consent, nor do the circumstances indicate that Old Navy felt it was using her likeness and needed to ask permission. Therefore, the sole issue becomes whether the Old Navy advertisement, viewed as a whole, in fact appropriated her persona. Over the past few years, the rise of reality television has generated novel questions about the right of publicity. The majority of the new challenges, however, relate to the blurring of the line between privacy and publicity. Often the claims are essentially contract disputes over the right of the producers to show certain footage or use a popular participant’s image for future advertising. These cases share the key fact that the producers used the actual image of the complaining party. The Kardashian case is quite different in that no actual images are used and thus the complaint must rely entirely on the misuse of her likeness.

Methods of Defining Likeness

In determining whether one’s persona has been misappropriated, the first step is for the claimant to identify the relevant elements of his or her persona that have been misused. It is a seemingly simple question, but in the age of reality television stardom and the paradoxical ability to gain celebrity without demonstrating unique talent, defining one’s persona becomes a more difficult task.

The question therefore becomes, what attributes uniquely define Kim Kardashian’s persona? Surely both parties in the case would admit a striking physical similarity between Kardashian and the actress in the commercial. But is that enough?

Woody Allen did successfully defend his right of publicity against a video rental chain whose advertisement depicted an Allen look-alike as a patron of one of their stores. However, in addition to the actor’s resemblance to Allen and his donning of thick-rimmed glasses, the advertisement included a portrayal of Allen’s meek demeanor as well as tapes of some of Allen’s well-known films sitting at the checkout counter. This combination of elements satisfied a New York court that Allen’s likeness had been used without his consent. What remained unclear is what role the pure physical resemblance played in the court’s decision. The other elements, such as the fact that the actor performed in Allen’s timid manner, the presence of the identifying video tapes and even the film-related context of the advertisement all undoubtedly contributed to the portrayal of Allen.

Defining Likeness for a Reality Star

For a reality star, however, identifying and claiming ownership over the non-physical cues is far more difficult. By their very definition, reality stars – no matter how melodramatic – are not famous for a particular performance or role, but for how they deal with the struggles of everyday life. Therefore many reality stars do not enjoy associations with iconic characters or previous works, the traits of which are often used to indirectly identify actors and actresses (e.g., Woody Allen’s stereotypically nervous characters or his direction of Annie Hall).

Nevertheless, Kardashian argues that the storyline of the Old Navy advertisement – a well-dressed young girl eating breakfast, shopping and even going to the dentist – is so similar to the content of her reality show that it actually further evokes her persona. This argument opens an entirely new question of whether the performance of mundane, everyday tasks can somehow become uniquely attributable to an individual. In other areas of Intellectual Property, for example trademark law, the widespread use (i.e., genericization) of a mark can lead to the loss of protection because the mark is no longer associated with a single source. Similar logic would lead one to think that the performance of generic tasks could not be considered evidence of one’s unique persona. That said, the right of publicity is a distinct area of law and an advertisement’s inclusion of stylized reality show elements may demonstrate intent to represent a reality show star. Regardless, Kardashian’s attorneys may now have the added challenge of convincing the court that performing common tasks can be indicative of a particular individual. If they are unable to do so, the case will hinge solely on the physical similarities between Kardashian and the Old Navy actress. Though there is a remarkable resemblance, they are still, in essence, simply attractive brunettes. It is unclear whether, without additional persona cues, sheer physical similarity will be enough to satisfy the court that her likeness was misappropriated.

As in most right of publicity cases, the key determination will be whether the claimant’s persona has been used. Unlike most high-profile right of publicity cases; however, there are serious questions as to what exactly Kim Kardashian’s persona is. Beyond clear physical similarities, there are few, if any, of the non-physical cues that have proved necessary to defend publicity rights in the past. A decision in favor of Kardashian could broaden celebrity protection even further in California, while an unfavorable verdict could limit future claims by reality stars known only for their looks. Whether the law should protect the commercial value of those whose celebrity is based on talents that are not readily discernable is, perhaps, a deeper social question.

© 2011 Autumn Love, Esq.

Filing a copyright application, although very important, is not necessary to establish copyright ownership. Copyright ownership is instantaneous, when a work is created and it is in fixed form its author immediately becomes the copyright owner and is afforded copyright protection. Fixed form is defined as “fixed in any tangible medium,” which is considered broadly to cover all tangible forms of expression, e.g., when a work is written down, when a performance is recorded, etc.

Why is it so important to establish copyright ownership? The Copyright Act of 1976 grants a number of exclusive rights to copyright owners, some of which include reproduction rights, distribution rights, public performance and display rights. This bundle of rights allows copyright owners to license their work for commercial purposes, making a lot of money doing so. Indeed, there are full-time jobs at studios and network television channels devoted to making sure anything displayed on TV has a media license agreement in place with the copyright owner (this includes cars models, clothes designers, food brands and beverages, and even blankets and quilts that are displayed). Also note that a minor may own a copyright, so if singing a licensing contract with a minor copyright owner, the minor should have a parent/guardian authorization in writing.

The one exception to the copyright immediate ownership rule is when a creation is a work made for hire. A work made for hire is a work prepared by an employee within the scope of his/her employment, in which case the employer is considered the author/owner upon fixation, unless the parties have expressly agreed otherwise in writing.

One issue that often comes up in litigation surrounding work made for hire is whether an artist is considered an employee or an independent contractor. In making this determination, courts have looked at factors such as duration of the work relationship, amount of employer’s control, can additional work be assigned, whose tools, whose work space, and who has control over hours worked. If an employer hires an artist for a project and would like to consider the artist’s work a for work made for hire it may not be enough to simply state in the artist’s employment agreement that the artists is to be considered an employee of the employer, the work made for hire factors should be taken into account as well. In addition, only copyright owners are eligible to file a copyright application for their work. When filing a copyright application, it is important to distinguish between a work made for hire and a work made by independent contractors.

When it comes to copyright ownership of works of art that are specially commissioned (i.e., think public monuments, large projects, etc) a work specially commissioned is not considered to be that of the employer who commissioned it, but rather that of the artist, unless the parties have executed a contract specifically stating that the work belongs to the party who commissioned the work. Therefore any work that an artist is commissioned to do, even an employee-artist, remains the ownership/authorship of the artist, unless there is a contract specifically to the contrary. This is because in writing the copyright laws, legislatures most likely understood the unequal bargaining power artists may have and their inclination to give aware their rights quickly, that is why the burden is on the employer to contract into a work made for hire, if the employer does not, then the artist has the right to retain ownership. In this situation only the artist may file a copyright application for the creative work.

When authors collaborate with each other or when many authors contribute separately to a project the work will be considered a joint work if the authors had the knowledge and intention that their work would be merged with the contributions of other authors as inseparable or interdependent parts of a unitary whole. Without a written agreement to the contrary, joint authors will be deemed to own an undivided interest in the entire work and each co-author has an independent right to use or license the entire work. This can get a little tricky if one co-author wants to license the work and another co-author does not agree, it is best to define permitted licensing arrangements before beginning joint works. Furthermore, in this situation, the authors should file a copyright application indicating joint ownership.

One of the most salient debates in the copyright realm is the Fair Use Defense, also known as Fair Use. Fair Use says that if you do infringe and use another’s copyrighted work without permission, your transgression is pardoned if the use is considered somehow newsworthy. The definition of newsworthy is vast, as any kind of social commentary, parody, critique, or public importance falls within the definition. Basically any use that is not seen as purely commercial is accepted under Fair Use. Keep in mind though that the copyrighted work that is “borrowed” must be reasonably necessary to make your point, as in, do not fully copy the whole work of Harry Potter, word for word.

© Ray Gradale, Esq.
Recently, the popular social networking site Facebook has filed suit against a new dating network, Shagbook.com, citing a likelihood of consumer confusion between the two trademarks. Facebook has alleged that Shagbook is attempting to trade off the pervasive fame of Facebook.

Originally, Trademark Law was mostly concerned with protecting the owner of the mark. Courts would determine whether a mark owner was injured by the diversion of its customers, sales and profits due to another’s infringing mark. If the trademark owner could not prove such damages, such suits would be dismissed even if actual public confusion was present.

Today, courts and the US Patents and Trademark Office (USPTO) have expanded on the one-dimensional profit-driven analysis. With the passage of the Lanham Act, once a mark is valid and legally protectable, Section 32 protects it from confusingly similar marks. This protection is provided via an analysis of certain set factors used to determine likelihood of confusion.

The Factors behind Determining Trademark Confusion

While the analysis behind determining trademark confusion varies by state, the main factors normally include: (1) trademark strength; (2) evidence of actual confusion; (3) intent to confuse; and (4) market factors. Court’s will typically examine and weigh these factors against each other before determining whether there is sufficient evidence of likely consumer confusion:

a. Trademark Strength

One of the most important considerations in any confusion-based trademark case involves the strength of the mark in question. If consumers widely recognize a mark as an indication of the origin of certain goods, there is a high likelihood of confusion if another party uses a similar mark.

If a trademark is fancy or arbitrary, it will normally be easier to prove a competitor copied the mark. However, if a trademark is generic sounding or merely descriptive of a product, it will be easier for a competitor to claim any confusion is coincidental or the result of a weak original trademark. A mark that is not inherently distinctive (or has not acquired distinctiveness) will be therefore be treated less favorably by the court.

Thus, in practice, naming your new brewery “Beer, Inc.” is not going to get much sympathy in court or with the USPTO when a competitor introduces a confusingly similar trademark in your market. In much the same way, the owners of Shagbook have argued that Facebook is too generic a name to deserve trademark protection. The courts will need to decide whether Facebook was an inherently distinctive trademark, or that it has acquired distinctiveness.

b. Evidence of Actual Confusion

Unsurprisingly, any evidence of actual confusion will be self-evident of the likelihood of confusion. Therefore, while actual confusion is not necessary to prove infringement, it remains a particularly relevant factor and will be necessary to receive damages. Surveying consumers is a popular way to show actual confusion. Should consumers believe that Shagbook is part of the Facebook social network, courts might be swayed toward finding trademark infringement has occurred.

The sophistication of the customer and their degree of care are also factors in determining actual confusion. Professional buyers with a high degree of training are less likely to be confused than a retail customer running a quick errand or perhaps a social internet surfer. Cost of the product will be examined as well, since more expensive products are likely to rouse a higher degree of customer scrutiny than inexpensive or free products.

c. Intent to Confuse

If trademark owners such as Shagbook knowingly used a confusingly similar mark to identify their goods, this demonstrates intent to profit off of the goodwill of others via likely confusion. Nonetheless, even if there was no intent whatsoever to use a confusingly similar mark, infringement may still be found due to actual confusion.

d. Market Factors

Finally, the proximity of products – or the likelihood of a future bridging of any gap in proximity between the products – also weighs heavily on the likelihood of confusion. If one company is selling beer and another sells shoes, a market factor analysis will be unlikely to uncover a likelihood of confusion between the similar trademarks. In such a case, not only are the markets separate, but it is improbable that they will ever be bridged. However, should both parties be involved in forms of online social networking, as with Facebook and Shagbook, courts will be more apt to find a likelihood of confusion.

Why Focus on Consumer Confusion?

While trademark law has shifted focus from protecting the trademark owner to protecting the customer, both proprietor and customer benefit nonetheless. Preventing the likelihood of confusion allows customers to quickly and consistently locate their preferred brands, thereby allowing trademark owners to profit from the goodwill of their superior product.

While courts have the consumer’s interest in mind when determining the merits of suits like the one brought by against Shagbook, the Facebook brand stands to benefit from a less confusing marketplace just as much as its customers. Ultimately, no matter the focus of trademark law, trademark owners should strive for a strong mark and equally strong legal protection of that mark.

Opposition No. 91164745

The University of Southern Mississippi (“USM”) filed a trademark application and sought registration on the following mark:

USM’s trademark application identified goods in the following international classes: 6, 9, 14, 16, 18, 20, 21, 24, 25, 27, 28 and 32.  After publication for opposition of the USM trademark (part of the trademark application/registration process) the University of Iowa (“Iowa”) opposed the registration of USM’s trademark, asserting a likelihood of confusion.  More specifically that USM’s trademark as used in connection with the listed good in USM’s trademark application, resembles Iowa’s previously used and registered trademarks, shown below:

Iowa received federal protection on these trademarks following filing a trademark application for each trademark.  USM filed subsequently filed an answer denying the allegations on the notice of opposition.

Likelihood of Confusion

The TTAB stated that Iowa has been using the Hawkeyes marks, including in the color yellow, for over thirty years in connection with athletic events and on a variety of goods and services.  The TTAB recognized that the Iowa trademarks have gained exposure and found that “they are at least well-known in the field of national collegiate athletics” and must be accorded a wider scope of protection.

The board then turned to the du Pont factors of the relatedness of goods and services, channels of trade and classes of purchasers and further affirmed that they must make their determination on these factors based on USM’s goods as they are identified in the trademark application.

Relationship of the Goods and Services

Both parties to this opposition operate large NCAA athletic programs.  The board agreed with USM’s contention that each university is best known within their respective regions, however, the board found that the record shows that Iowa is afforded popular nationwide exposure.  Based upon the evidence, the board found that the second du pont factor weighs strongly in favor of a finding of likelihood of confusion.

Similarity of Trade Channels

The board further found that identical goods are or would be marketed in some of the same trade channels to identical classes of customers.  For example, college campus stores around the country and selling merchandise on national networks such as ESPN.  As a result, the board concluded that this du pont factor favors Oowa’s position on likelihood of confusion.

Conditions of Purchase

The board found that based upon the evidence that the majority of items identified in Iowa’s registration or shown to be covered by common law marks are relatively inexpensive items.  Furthermore, the board stated that “less knowledgeable purchasers are likely to exercise a lesser degree of care in purchasing the goods given the inexpensive nature of many of the products sold under the marks.”  In selecting the standard of care, the board made its determination based upon the least sophisticated customers and found that the du pont factor focusing on the conditions of purchase weighs in favor of a finding of likelihood of confusion.

Similarity of the Marks

The board stated that the “commercial impressions of the marks are essentially the same. Both parties’ marks present the head of a bird of prey facing right, and basically oval in shape. Both contain identical colors. These images are very similar to each other in style and proportion. They both involve a bold profile image of the head of a large bird. That Southern Miss’s eagle may be a bit more literal and fierce than Iowa’s original Hawkeyes mark does not overcome the overall similarities.”  On this factor the board found that “Iowa has shown a similarity in these parties’ respective marks that favors a finding of likelihood of confusion.”

Conclusion

“On balance, the relevant du Pont factors weigh in favor of a likelihood of confusion herein. In spite of the fact that the sixth du Pont factor may weigh slightly in applicant’s favor, given the legally identical goods, the legally identical trade channels of the identified goods and the actual trade channels of opposers’ common law usages, the same classes of ordinary consumers, the similarity of the marks, and the renown of Iowa’s marks, we find a likelihood of confusion as between applicant’s mark and opposers’ marks, such that registration of applicant’s mark is barred under Trademark Act Section 2(d). du Pont factors weigh in favor of a likelihood of confusion herein. In spite of the fact that the sixth du Pont factor may weigh slightly in applicant’s favor, given the legally identical goods, the legally identical trade channels of the identified goods and the actual trade channels of opposers’ common law usages, the same classes of ordinary consumers, the similarity of the marks, and the renown of Iowa’s marks, we find a likelihood of confusion as between applicant’s mark and opposers’ marks, such that registration of applicant’s mark is barred under Trademark Act Section 2(d).”

The United States Patent & Trademark Office (or USPTO) is a Federal agency responsible for granting U.S. patents and registering trademarks. The USPTO receives its authority to grant patents from Article I, Section 8, Clause 8, of the Constitution which states that the Executive branch “promote the progress of science and the useful arts by securing for limited times to inventors the exclusive right to their respective discoveries.” Furthermore, the USPTO receives the right to register trademarks from the Commerce Clause of the U.S. Constitution.

It is important to distinguish between the two main branches of the USPTO, those being trademarks and patents. Generally, the USPTO defines a patent as “a limited duration property right relating to an invention, granted by the United States Patent and Trademark Office in exchange for public disclosure of the invention.” In contrast, a trademark is defined as “a word, phrase, symbol or design, or a combination thereof, that identifies and distinguishes the source of the goods of one party from those of others.” Furthermore, a “service mark” is the same as a trademark except that, a “service mark” is a word, design, symbol, or phrase, or a combination thereof that identifies and distinguishes the source of one party’s service over those of others rather than being the source of goods.

At this time LegalSherpa does not offer patent registration services, thus the remainder of this article will be focused on Trademark Registration and the USPTO.

In recent years, the USPTO introduced an online trademark application system named TEAS and TEAS Plus. This new electronic application system has streamlined the trademark application process and provided an online resource for trademark applicants to submit their trademark applications. The downside to this new electronic application process is that a trademark applicant who is not familiar with the TEAS system may be easily confused. This is where LegalSherpa steps in!

Our lawyers with years of experience in successfully registering trademarks have created streamlined online forms that are simple and easy to use. Our forms will allow you to provide all the information necessary to register a trademark in a matter of minutes. The interactive trademark form will walk you thought a once difficult and confusing process. In addition you do not need to fear making mistakes on the form since our expert trademark application professionals will review all of the information you provided. Once our representative reviews your information, we will contact you to complete you for confirmation. Just remember, you can always change any information you have submitted up until the time your application is submitted. Once we have determined that your trademark application is complete, the trademark professional assigned to your application will electronically file your trademark application. Once filed, you will be required to electronically sign your application.

© 2011 Gena Simon

A statutory copyright is a bundle of exclusive rights granted by the federal government to the author of an original work for a limited period of time. Exclusive rights include the right of reproduction, adaptation, public distribution, public performance and public display. During this period, the copyright owner may exercise exclusive control over the work and other exploitations of the work. These rights, however, are not infinite and are limited by the fair use doctrine and other provisions specifically stated within the copyright laws.

Typically, statutory copyright protection is awarded to an original work of authorship fixed in a tangible medium of expression. Work is defined to include any of the following: literary, musical, dramatic, pantomimes and choreographic, pictorial graphic and sculptural, motion pictures and audiovisual and sound recordings and architectural. Furthermore, filing a copyright application is not a prerequisite for receiving copyright protection.

The originality standard is extremely low and demands only that the work be an independent creation of the author and exhibit a modest quantum of creativity. Independent creation is found when the author creates or originates the work, not merely records it. This is true even if the author is the first to publish the work. Novelty is not required and the originality standard does not necessitate that a work be unique or different from its predecessors. Creativity is found when the author demonstrates even the slightest trace of originality. The author need not show that he engaged in a lengthy creative process, made notably creative decisions or satisfied any standard of artistic creation. The United States Supreme Court defines “creativity” in the negative as to what is not sufficient: works which are mechanical, routine, typical, inevitable, obvious, dictated by law, garden variety, industry standards, regulation requirements and ideas, systems or concepts.

Fixation in a tangible medium of expression is the second requirement of copyright protection. Fixation is found when the work is sufficiently permanent or stable to permit it to be received, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. For example, a song is fixed the moment it is written down on a piece of paper. The paper is the medium on which the song can be perceived, reproduced or communicated. Likewise, a song is fixed when the author records into onto a cassette tape or other digital format. The cassette tape or other digital format is the medium on which the song can be perceived, reproduced or communicated.

The fixation definition excludes purely evanescent or transient reproductions, such as those projected briefly on a screen, shown electronically on a television or other cathode ray tube, or captured momentarily in the “memory” of a computer. The definition, however, does not exclude the content of a live transmission if the content is being recorded simultaneously with its transmission. For example, by definition, a live performance is not “fixed” and therefore not awarded copyright protection because it is evanescent in nature. But, if the artist made a contemporaneous copy of the live performance, the work is protected under the copyright laws.

Derivative works are those based upon one or more preexisting works. Examples include a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction or any other form of editorial revisions, annotations, elaborations or other medications which represent an original work of authorship. Derivative works are afforded statutory copyright protection if the work derived from the original copyright is substantially different from the underlying work and satisfies the originality and fixation requirements. The rationale holds that if a derivative work closely resembles the original, the court will have difficulty determining whether the later work was copied from the first derivative work or based upon the original. The court will therefore deny copyright to the first derivative work if the author fails to exhibit a sufficiently gross difference between the underlying work and the derivative work.

Two or more people may share a copyright in a joint work. A work is considered joint if the authors collaborate with each other, or if the authors prepared their own contributions with the knowledge and intention that it would merge with the other contributions as an inseparable or independent part of a unitary whole. Authors need not complete their works during the same time period, or even know one another. The sole requirement is the intent that each author will contribute his work to a joint work. If there is no intent, each author will retain ownership of his separate work.

Copyright infringement occurs when another party violates one or more of the exclusive rights and does so without first obtaining the owner’s permission. A prima facie case requires the author: (1) to demonstrate ownership of a valid copyright; (2) to prove that his work was actually copied by proving access and substantial similarity between the two works; and (3) to show that the copying amounts to an improper or unlawful appropriation. The final prong necessitates a showing that the substantial similarities relate to protectable material and that the amount copied is more than de minimus. If infringement is found, the copyright owner is entitled to his actual damages, which include those damages suffered as a result of the infringement and any profits incurred as a result of the infringement. In lieu of his actual damages, however, the copyright owner may elect to receive statutory damages in the amount of $750-$30,000 per work (as decided by the court). It is also important to note that filing a copyright application is a prerequisite to filing a copyright infringement suit.

A party may also be secondarily liable for copyright infringement. Secondary liability occurs when one party assumes legal responsibility for the actions of another party. The two types of secondary liability are contributory liability and vicarious liability. Contributory liability requires (1) knowledge of the infringing activity and (2) material contribution to the infringing conduct of another. Vicarious liability requires (1) the right and ability to control the infringing activity and (2) direct financial interest in the infringing activity.

The fair use doctrine permits another to use a copyrighted work without first obtaining the author’s permission. It specifically protects the use of copyrighted works for criticism, news reporting, teaching, scholarship or research. For all other uses, including parody, the court is required to consider four factors: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantability of the portion taken; and (4) the effect of the use on the potential market. Per the instructions of the court, these factors are not to be treated in isolation, one from the other. All are to be explored, and the results weighed together. If fair use is found, there is no copyright infringement.

Under the current Copyright Act of 1976, copyright protection is awarded for the following terms: For works of a known author, the life of the author plus seventy years. For anonymous, pseudonymous and works for hire, seventy-five years from publication or one-hundred years from creation, whichever is less. At the conclusion of the statutory term, previously protected works enter the public domain. This is extremely significant because public domain works may be freely used by third-parties without permission of the original author.