More about university trademarks and politics

As I reported earlier, colleges and universities have been actively enforcing their trademarks. These schools used to allow their name to be used on pretty much everything, and not collect any royalties. That has now changed, and schools are stopping any unauthorized use of their trademarks- often relating to the name of the school, the mascot name, and the school colors. The schools obviously cannot control all use, and there are many fair use exceptions: news reports, information about the school, etc. However, pretty much any commercial use is now being stopped.

Turns out that the University of Missouri-Columbia (MU) has become a de facto force in local political races, including the state senate. Twenty-one political candidates were expected to turn out for the school's homecoming parade. Many candidates are pushing their ties to the university and their desire to bring more funding to the school. This is OK if they want to mention this in speeches, in a non-commercial context. However, according to The Columbia Daily Tribune, candidates have been going a little too far. Some candidates have been putting MU trademarks in their commercials, and also using MU trademarks in their campaign literature. The school has been contacting candidates to stop using their trademarks in print and in commercials. Quite clearly, this kind of trademark use essentially implies an endorsement by MU, and they are right to enforce their trademark rights.

Now what about going after the fraternities that put the name of the school on their Greek Week t-shirts. Is this fair use?

On a small side note, this is yet another news article that uses the terms "trademark" and "copyright" interchangeably. As I explained in "Difference between patent, trademark, and copyright," trademarks and copyrights are different. Trademarks identify the source of goods and services (usually a name or a logo), and copyrights protect something expressed in a fixed medium (such as text, sounds, or pictures). Quoting the article:

In their effort to link themselves with MU, some campaigns have gone beyond what the campus would like by placing copyrighted MU trademarks or names in campaign literature. MU and its licensing department have asked those campaigns to stop using those materials.

Earlier this week, MU Chancellor Brady Deaton said he’s noticed more examples of copyright misuses than in past elections and the campus is concerned by it.

[Emphasis added]

I'm sorry, but trademarks are not copyrighted and vice versa. It's either one or the other. A copyright would cover something like a t-shirt design with the MU name/logo. A trademark covers the MU name or logo. The two terms are not synonymous, and people should really stop using the terms interchangeably. Without researching this matter further, I am almost completely sure that the problems here are trademark related, and have nothing to do with trademarks.

Happy Birthday Trademark

I read a few stories coming out of Asia claiming that the Fufeng toy plant in China had received registered trademarks for the term "Happy Birthday." According to the articles, which appear to be just re-printed press releases:

The words “Happy Birthday” can no longer be legally used if they are pinned to any other product, as a private Chinese company has claimed to have registered them as its trademark in 25 countries, including the US, Japan and European Union members this month.

I read this and thought, "WOW! They must have a huge trademark registration!" Trademarks cover classes of goods and services. Thus you can have a mark in class 9 (which include abacuses and automatic nozzles) and have the same mark in class 42 for computer consultation services. The goods and services are considered different enough that consumers can tell the difference.

So, the company claims that no product can use the term "Happy Birthday," that means this company has registered trademarks covering all classes of goods and services. So I checked the USPTO website. Guess what? I couldn't find any trademarks for "Happy Birthday" that either covered every class, or was registered to a Chinese company. I did find 65 applications and registrations, including a few which drew my interest:

1- HAPPY BIRTHDAY!!, U.S. Trademark No. 2869279, was registered on August 3, 2004. This trademark was first used in September 2002, and covers direct mail advertising.

2- HAPPY BIRTHDAY, U.S. Trademark No. 2783736, was registered on November 18, 2003. This trademark was first used in August of 1996, and covers cupcakes

3- HAPPY BIRTHDAY, U.S. Trademark No. 2692628, was registered on March 4, 2003. This trademark was first used in August of 1987. The owner of this mark is Jody Fine Korman, of Virginia Beach, VA. This registered trademark is still valid.

4- HAPPY BIRTHDAY, U.S. Trademark No. 2790862, was registered on December 9, 2003. This trademark was first used in August of 2001, and covers perfume, cologne, and cosemetics.

5- HAPPY BIRTHDAY, U.S. Trademark No. 2634966, was registered on October 15, 2002. This trademark was first used in July of 2000, and covers grape juice.

6- HAPPY BIRTHDAY, U.S. Trademark No. 1046919, was registered on August 24, 1976. This trademark was first used in November of 1975.

I could go on, but there are others, including purses & bags for Cartier, and others. I'm not really sure if this Chinese company is even telling the truth about having filed for any trademarks. If they have at least filed in the US, I should be able to see their application on the USPTO's site. I cannot find even a registration, so I think they're full of it.

Even if they did have a trademark regisrtration, it would have to be so broad as to cover every single product- we're talking tens of thousands of dollars in filing fees just to start. People would still be able to say Happy Birthday, and be able to send Happy Birthday cards as well. I think this company is trying to scare competitors from making signs and bunting and the like. By the way, the song Happy Birthday is indeed covered by copyright, and commercial use of the song requires the payment of royalties. It's OK to sing it in a non-commercial setting without having to pay royalties.

A note to those papers in Asia: you should do a really brief amount of research before publishing a press release. A five minute check would have shown that this press release is wrong at least for the US, and is likely wrong in the other countries as well.

Windshield Doctor- The trademark dispute

A news story from Eastern Idaho reports of a battle between two businesses containing the mark "Windshield Doctor." Rande Oksendahl, owner of Windshield Doctor in Idaho Falls, received notice a year ago to change his business name. The news story indicates that a national chain of windshield repair shops is responsible for this action, but did not mention the name of the chain. We're told that Rande has used this name for 26 years.

Since this is a trademark infringement matter, and I'm going to guess that the two names were similar, I suspect that the chain is indeed called Windshield Doctor. Also, since Rande changed his name, I'm going to assume that someone with superior trademark rights got him to change his name. He's been using his mark locally for 26 years, which gives him significant local trademark rights. A search of the USPTO returned one currently registered trademark for "Windshield Doctor," a cancelled registration, and four abandoned trademark applications.

1- THE WINDSHIELD DOCTOR, U.S. Trademark No. 2790862, was registered on December 9, 2003. This trademark was first used in August of 1987. The owner of this mark is Jody Fine Korman, of Virginia Beach, VA. This registered trademark is still valid.

2- WINDSHIELD DOCTOR, U.S. Trademark No. 1826625, was registered on March 15, 1994. This trademark was first used in October 1979. The owner is (was?) Windshield Doctor of Bismarck, Inc., of Bismarck, ND. This registered trademark was cancelled on April 28, 2001, and is thus no longer enforceable as a registered trademark. There may still be common law trademark rights associated with this mark, such as use in a local market.

3- WINDSHIELD DOCTOR, U.S. Trademark Application No. 78207101, filed January 24, 2003. The applicant is Windshield Doctor Inc., of Mission Viejo, CA. The trademark application was abandoned.

4- THE WINDSHIELD DOCTOR & Design, U.S. Trademark Application No. 73810721, filed June 30, 1989, with first use in August 1980. This trademark also included the graphical component of a first aid cross (see the mark here). The applicant is The Windshield Doctor, Inc., of St. Louis, MO. The trademark application was abandoned.

5- THE WINDSHIELD DOCTOR, U.S. Trademark Application No. 73810698, filed June 30, 1989, with first use in August 1980. The applicant is also The Windshield Doctor, Inc., of St. Louis, MO. The trademark application was abandoned.

6- WINDSHIELD DOCTOR, U.S. Trademark Application No. 73519571, filed January 28, 1985, with first use of January 21, 1981. The applicant was Franklin Delano Reheim, DBA The Windshield Doctor, of New Plymouth, ID. The trademark application was abandoned.

Number 6 is of note, as it is in Idaho, however it is not the person in the story. New Plymouth is over 300 miles from Idaho Falls, and business in the story does not have "The" in the name (see Yellow Page listing).

According to the news story, Rande Oksendahl had been using the name "Windshield Doctor" for 26 years. That puts his first use date in the year 1978. None of the above marks had an earlier use date than Rande. It's a safe assumption that if someone is coming after him to change their business, they have a federally registered trademark- that was you show you are serious about your mark, and are not merely enforcing common law trademark rights. My question is: which one of the marks above were used to shut Rande down? Why were they able to do so? Rande has longer use than any of them- assuming my news story was accurate. Given the facts I have, I think Rande should still be using his mark.

Screening potential trademarks for ads

The Advertiser, in Lafayette, Louisiana, as a story entitled Web search can help avoid trademark violation, which discusses how local business advertisers can avoid potential trademark infringement problems. The article very briefly explains the difference between trademark and copyright law, and various types of trademark infringement. It then recommends:

Doing the research can help avoid that confusion, said Tom Will, a senior vice president with Sides and Associates Inc. Doing a quick Web search on a particular name could easily lead to finding out whether or not a name is already being used for a particular product or service, Will said.

While this is a very good first step, it will not find every mark that could pose problems. To find something on the web, it must first be on the web. Not all materials are posted on the web. Second, the website must be in search engines. Estimates vary, but a good 1/2 of the websites might not be included in the indexes of the major search engines. Reasons vary, but it could be because no one links to those website, or the websites cannot be viewed by search engines (because of flash, frames, and other poorly designed websites). Third, while it is easy to find identical marks through search engines, it is tough to find similar marks through a web search.

So, what to do? A web search is a good start. A trademark search can be conducted through the USPTO's website. This will only show marks that have been filed through the USPTO, and does not search state trademark systems. The USPTO does search for slightly similar marks as well. The next option is to use a trademark search service, through a search firm or a law firm. This will be more expensive, but the search is much more broad.

Which option should you use? The answer depends upon how much money you want to spend. If you're advertising something locally, and you're a small company or single person, then it's not likely that even if you are infringing someone innocently you will be hit for a lot of damages. That said, this is not a sure thing. Some trademark holders do not take kindly to having their marks infringed. If you are planning a longer campaign, or establishing a new brand, you might want to explore whether the mark is being used. Spending money ahead of time to clear a mark can save you costs down the road if you get hit with either a cease & desist letter (and have to rename everything) or get sued (then have to defend yourself in court or even pay damages.)

The future of IP Law: Tastes & Smells?

Unlike most IP lawyers, or most people for that matter, I'm a rabid reader of Slashdot. For those of you unfamiliar with Slashdot, it bills itself as "News for Nerds. Stuff that Matters." I guess that makes me a nerd, but I prefer the term "computer geek."

Anyways, there was an interesting discussion on Slashdot about the future of IP Law, and whether it will extend to cover smells and tastes. Here is the entire discussion. FYI, I post as the user "lothar97." Here's an overview.

Futurist Thomas Frey wrote an article posted on the Da Vinci Institute's website entitled Intellectual Property’s Next Big Wave: Taste & Smell Patents. This is a trademark blog, so I don't normally talk about patents. However, people confuse patents, trademarks & copyrights, including the article's author. He mentions how there are "many" sound trademarks, and that there are a few smell trademarks- so patents must be close behind. Here is what I wrote in response to this:

1. In one sentence Frey refers to trademarks of smells, and then in the next sentence wonders if smell patents can be close behind. For the last f'ing time, patents != trademarks.

Patent: protects an invention (but not an idea itself)
Trademark: identifies a source of goods or services (usually through a name or logo)

Patents and trademark are quite different, so please stop confusing them- especially people writing scholarly articles.

2. There are not "many" color or sound trademarks. There are very few sound trademarks- the NBC chime comes to mind, and Harley Davidson recently lost their attempt to trademark the Harley engine sound. As for colors, you can get your trademark in a specific color (to distinguish it from similar marks, but there are very few color only trademarks. The only one I know of is Orange, which gets the color orange for cell phones. Using colors for trademarks is more of a European thing, as the US only within the last year began accepting color drawings in trademark applications.

3. I think Frey is going too far. Sure patent attorneys like to stretch the limits of the law for their clients (like all attorneys), but there needs to be something codified in the law to allow patenting of a smell. Currently a smell by itself does not reach the minimum definition of patentable subject matter. To have something that is patentable, you need a physical invention that does something useful, and I don't see how a smell in itself provides this usefulness. I can see smell as part of an invention, such as a fire alarm system or adding smells to movies. Throwing out wild hypotheticals, I guess you could patent a smell that makes the person inhaling it do a specific reaction- but then that raises ethical questions that the patent office might use as a rejection.

There is something called a design patent, which protects the ornamental features of an invention (like the propeller people put on their trailer hitches). With a design patent, you do not have claim any useful features, you just show drawings. This could logically be extended to smells, but you need to have a change in the laws.

Usually when I pull out the IAAL on Slashdot (I Am A Lawyer), I get chewed out. This time, I didn't much grumbling with lawyer jokes and the like. Some people agreed with me, and gave some more interesting information.

It turns out that there are starting to be more smell trademarks, and it looks like Europe is leading the charge. So says The Registration of Smell Trademarks in Europe. I read through the article, and there are several attempts to register smells. European law and US law are obviously different. There's an interesting tidbit in the cited article. To register any trademark in the EU, you need a graphical representation. You have to show the mark, and describe it if need be (such as the case for the color orange for cell phones, you just describe the color). It's quite difficult to graphically represent a smell (if you know how, please let me know!) The article mentions describing "rose scent for tyres [UK]," which was allowed to become a trademark. Chanel No. 5 tried to get a smell trademark for:

“scent of aldehydic-floral fragrance product, with an aldehydic top note from aldehydes, bergamont, lemon and neroli; an elegant floral middle note, from jasmine, rose, lily of the valley, orris and ylang-ylang; and a sensual feminine note from sandal, cedar, vanilla, amber, civet and musk. The scent is also being known by the written brand name No 5."

That was not clear enough, and their mark was rejected. Contrasting this with the rose-scented tires, everyone knows what a rose smells like. No one can readily identify the scent of the combined various ingredients list that Chanel provided- however I imagine most people who have smelled Chanel No. 5 can identify it in the future.

Contrasting two more cases, the article also mentioned that "the strong smell of bitter beer applied to flights for darts" [UK] was allowed. I guess most people know what beer smells like, and I guess most people in the UK know what a bitter beer smells like. This might not be the case in the US. A German outfit tried to get “smell of fresh cut grass” for tennis balls, but it was found that people associate different smells with this. I guess cut grass smell varies by different types of grass, fresh grass, dry grass, etc.

My research indicates that in the US you can get smell trademarks, but I do not have any specific ones right now. I'll dig around more and find some, so come back soon.

HP defends its mark in South Korea

The Digital Chosun (South Korea) is reporting that Hewlett-Packard Co. has brought suit against ReignCom Ltd. for trademark infringement. Why you might ask? Turns out that ReignCom is selling a digital music player called- "iHP." Strangely enough, according to the article, Hewlett-Packard (commonly known as "HP") claims that ReignCom has "appropriated HP's internationally renowned trademark of "HP." (I like to use sarcasm)

According to the article, ReignCom is widely known for its best-selling "iRiver" MP3 and CD players. For the life of me, I cannot imagine why ReignCom would try using the mark "iHP," since they do not appear to have any legitimate use to the letters "H" and "P," when used together in a close manner. Perhaps (and I'm just wildly speculating now) in Korean the "R" is an "H" and the "C" is an "P" (thus ReignCom abbreviated RC becomes HP). I'm stretching it, but I am flabbergasted that they would want to use this mark, which is sure to bring the attention of HP- especially since HP unveiled in January 2004 that they were selling an HP-branded version of the iPod.

Sounds like ReignCom made a bad business call. This is why it is quite important, when launching a new mark (company name, product name, etc), to make sure you conduct extensive trademark searches within your country, and abroad. Sometimes you can limit it to just your own country, but I cannot stress how many of these trademark infringement matters discussed here can be avoided by conducting trademark searches and following the recommendations of the attorney that conducts the search. Now for the shameless plug- I conduct these trademark searches all the time, so if you need one, please contact me.

TupperWars update

Here's an update to my earlier post about TupperWars.

According to a message posted on the Tupperware Message Board of Yahoo! Finance, it appears CAFO had a section called "TupperWars" on their website. This changes the above analysis, but I think the result is still the same. If CAFO was just using the Tupperware mark, and was talking about Tupperware, then CAFO should be able to do that (I don't know all the facts of their messages, which could change my opinion). By using TupperWars, then we get into a question of whether they are attempting to profit from using a mark similar to that of Tupperware. I'd argue that they are not.

It is also perhaps quite obvious to anyone reading the section entitled "TupperWars" that the website is not part of Tupperware- and thus there is no confusion between the marks. The biggest issue in trademark infringement cases is often that of confusion between the two marks, and I'd bet money that it would be pretty easy to show that there is a very low likelihood of confusion between "TupperWars" and "Tupperware." While the two terms are different by only 1 letter, the different connotation of the two are quite different- war v. storage container. Couple that with the content of the "TupperWars" section, and I imagine that a strong case could be made that CAFO should be able to continue using their mark. More to come...]

Sean John sued by Ellesse for trademark infringement

According to the NY Post, the clothing company owned by Sean "P. Diddy" Combs, Sean John, is being sued for trademark infringement. Ellesse is suing, claiming that a design on a Sean John line infringes their mark. Ellesse has a bunch of trademarks, and it appears they are referring to U.S. Trademark Registration No. 1247607, registered on August 9, 1983. The mark is:



The original image is located on the U.S. Patent & Trademark Office's website.

The Sean John mark appears to be the one below. I have grabbed a copy for illustrative purposes from Macys.com, in the event the image is removed from Macy's website.




Ellesse claims the Sean John marks "is likely to cause confusion, mistake or deception as to the source, association, affiliation or sponsorship of the goods being offered." While I do not specifically know which marks are involved, I would have to say that the two marks shown above are quite similar. There are arguments that can be made about the differences in colors, in the way the images are formed, and that the Sean John logo includes text. The Ellesse mark covers apparel, including t-shirts.

My guess? I think that Sean John doesn't really have a chance. The two logos do look quite similar, and Ellesse has been using the mark for at least 10 years longer than Sean John. Sean John might want to consider settling this case.

Trademark Law Treaty to be updated... in 2006

According to WIPO Updates Standards For Trademark Registration Procedures, member countries of WIPO (World Intellectual Property Organization, which among other things facilitates trademark protection around the world) have agreed to meet to discuss a Revised Trademark Law Treaty (TLT). Don't expect results soon, the talks won't get underway until March 2006. Per the article, the revisions will focus on:

- the inclusion into the treaty of provisions on electronic filing of trademark applications and associated communications;
- provisions concerning the recording of trademark licenses;
- relief measures when certain time limits have been missed; and
- the establishment of an assembly of the contracting parties to enable the adaptation of certain administrative details regulated under the treaty.

The end result should be an easier and quicker method of filing, protecting & maintaining trademarks around the world.

Hey, hey, hey! Don't infringe Fat Albert!

"If you don't enforce your rights to the trademark you risk (A) the dilution of the mark and (B) losing legal rights to them. So we always enforce our rights."

Thus spoke John P. Schmitt, of the New York firm of Patterson, Belknap, Webb & Tyler- the firm that represents Bill Cosby. I concur with Mr. Schmitt's reasoning. A trademark can potentially last forever, and you thus need to protect it.

According to Phat Free, there is (now was) a band in Kansas called Phat Albert. The guys in the band remember the cartoon called Fat created by Bill Cosby from their childhood. PBW&T sent a cease & desist letter to the guys in Phat Albert, telling them to stop using the mark. Somehow the TV show from the Seventies is still being used a mark- perhaps for more shows, or perhaps a movie?

An argument could be made that a TV show and a band are both entertainment, and confusion is likely. As I reported last week, Survior (TV show) does not infringe Survivor (Band). I think the difference here is that Fat Albert (TV show) had the kids play in a band, so that might extend their trademark use to cover the goods/services produced by Phat Albert.

It begs the question how far bands can go in using trademarks of others. I've been a fan of the San Diego band Spaceman Spiff for a few years. A quick web search revealed a Maryland band named Spaceman Spiff as well. Clearly these are all people who are fans of Calvin and Hobbes, which contained an imaginary space hero called... Spaceman Spiff. I imagine that there was never a trademak filed for the cartoon Spaceman Spiff, but one could argue that there is trademark use, and that people can identify where the name comes from.

Can a tribute band use the original band's name? Perhaps a term made famous by the band? Some Beatles cover bands include Strawberry Fields, Beatlemania, and Rubber Soul. Is this considered fair use? One could argue no, that it is being used solely to earn money off of the name(s) of the Beatles. One could argue yes, in that these terms, although familiar to Beatles fans, are not actual trademarks. I'd like to think that the people who hold the rights to the Beatles IP portfolio decided not to sue their fans.

Watering down Windows trademark

Microsoft is having trademark problem again, and this time it has nothing to do with the company formerly known as Lindows claiming that "Windows" is a generic computer term that should never have been registered in the first place (this case has settled.)

The European Commission has ruled that Microsoft has been abusing their market share, and bundling extra technologies into their operating system. It appears that they can get big, but not shift that power into other areas. By including MSN Messenger or Windows Media player with a fresh install of Windows, they shut out competitors like AOL Instant Messenger or Real Audio. The argument goes that since there are already programs installed that do the same functionality, people will be less likely to install other non-Microsoft software.

The EU has ordered Microsoft to remove Windows Media Player from upcoming versions of Windows. I really don't think that will do much, since how many people actually purchase media playing software for their PC? There are indeed other software you can use for free, such as Winamp, MusicMatch and Real Player. I think people use these because they don't like Windows Media Player (myself included). Sometimes you need the Microsoft version, because a website might only have a video feed in Windows Media Format. Just because it doesn't come with Windows does not mean it will not be installed by a wide number of people. If good software is out there, and better than the Microsoft version, people will flock to it. Mozilla Firefox is a great example (I use Firefox, and recommend it instead of IE).

According to Microsoft says EU ruling would harm trademark on CBS MarketWatch:

"Microsoft is forced to create an adaptation of Windows that it would never consider creating otherwise and it must label it with its valuable Windows trademark. It strikes at the very heart of Microsoft's business model and design of Windows." They also said some websites wouldn't work without Windows Media Player and consumers who bought that version of Windows are "very likely to feel deceived."

I think this Microsoft spokesperson is a little batty. Do people buy Windows because they want Windows Media Player? If someone thinks that the only way to get Windows Media Player is to buy Microsoft Windows, then this is a pretty clueless person. I'll give you hint as to how you can obtain it: click here, and save yourself the price of Windows. Windows Media Player is free. I can see if Windows did not include a web browser, or couldn't play games- now those are features that people like and expect when buying Windows. I imagine media player is at the bottom of their list, and the consumers are already familiar with some of the other non-Microsoft media players.

No Vols for Bush

When I in college, pretty much anyone could print up a t-shirt or other design using the college's name or colors. That was in the 90s. Now, it's tough to use college marks anywhere. According to UTPD confiscates stickers for trademark violations:

At a Republican Party pre-game tailgate party, members of Vols for Bush and UT's College Republicans handed out stickers with an orange and white checkerboard background that said "Vols for Bush." But they were surprised when a UTPD undercover detective came to confiscate the stickers, citing trademark violations.

The mascot for the University of Tennessee is the Volunteers, also known as the Vols. It sure looks like the school is clamping down on the use of their trademark. I can understand that they would want to confiscate goods like shirts or mugs that bear the mark, as these are things that are arguably commercial in nature. I find it strange that a club called "Vols for Bush" cannot put their name on stickers. I can see how one might assume that the school approved of the use, but can the school realistically patrol or enforce every use of their mark? If there was an alumni club called "Southern California Vols," would the school have the right to take away t-shirts printed with their names? Perhaps if they had not used the colors or pattern of the Vols mark they would've been OK.

For now they've just got to find another way to support their president.

Difference between patent, trademark, and copyright

Many people confuse the different areas of intellectual property (IP) law. To make sure that we keep this straight on this website, here is the difference between a patent, a trademark, and a copyright:

Patent: protects an invention (but not an idea itself)
Trademark: protection that identifies a source of goods or services (usually through a name or logo)
Copyright: protects an expression in a tangible and fixed medium (anything from writing on a paper, to artwork, to a newspaper, to computer software).

There is also "trade secret," but it's not as widely known. Patents, trademarks, and copyright (mostly) have to be fully disclosed to the public, and an application must be filed with the government to get full protection. In the case of patents, you have to file something to get protection. Trade secret basically keeps something secret, and is not filed with the government- and it is basically kept secret. It can be a formula (like the ingredients of Coca Cola), or a process.