UPDATE 05/07/18: Reports that Amazon is advising publishers of takedown notices are circulating online. Please note that there are TWO KINDS of takedown notice Amazon can get, and then advise sellers of. The first is a copyright takedown, often referred to as a DMCA Notice (though there are other kinds.) The second is a trademark takedown, often referred to as a Brand Registry takedown (though there are other kinds.) THEY ARE NOT THE SAME. Sending a DMCA counter-notice in response to a trademark takedown will be ineffective. Brand Registry notices can be very difficult to deal with. I recommend anyone who wants to fight one retain an experienced trademark attorney.
FLASH UPDATE: Retired IP litigator and author Kevin Kneupper has filed a Petition for Cancellation of the “COCKY” standard character mark. Link to his filing here: https://twitter.com/kneupperwriter/status/993359859071381505. The petition will now be considered in due course by the Trademark Office. We should not expect to hear anything for a few weeks, and the matter could take months to resolve. But in the meantime the registration stands and the risks remain.
Please Note: As I type, this appears to be a developing situation. The trademark in question was registered literally only three days ago. I have not seen any of the C&D letters people are alleging are going out. Nothing in this post should be taken as legal advice or even as verified fact. This is for general education only.
Also please note that the Romance Writers of America, an industry group, is allegedly also looking into this matter. They will probably provide a centralized response. Author Liliana Hart reports that the RWA requests that people who are contacted by Ms. Hopkins or her attorneys contact Carol Ritter of the RWA at this email: firstname.lastname@example.org
If you get a cease and desist letter or any other form of legal communication, you may find my “HELP, I JUST GOT A LEGAL THING!” post useful. Click here to read it.
UPDATE: I did not see that the publisher had two trademark registrations, one for the standard character mark, and one for the stylized mark. Post edited accordingly.
Now on with the post.
This evening I started seeing tweets like this one:
There's a romance author, Faleena Hopkins, who is sending takedown notices to other romance authors because she thinks she has a trademark on the word "Cocky." Which she doesn't have, but is hoping her threats make people change their titles.
— Christopher Sebela (@xtop) May 5, 2018
Most People Are Fuzzy On IP: An Intellectual Property Primer
Written as a guest post for Lawyers and Liquor, hosted by the inimitable Boozy Barrister. If you have comments, please consider posting them on the original post, here: http://www.lawyersandliquor.com/2018/01/guest-post-most-people-are-fuzzy-on-ip-an-intellectual-property-primer/
I’m Marc Whipple, an intellectual property attorney. I blog at Legal Inspiration and you can find me on Twitter as LegalInspire. I’m licensed to practice law in the state of Illinois and I am a registered patent attorney, which means I can appear before the United States Patent and Trademark Office on behalf of inventors wishing to file patent applications. I’ve been practicing law for over twenty years and I like to think I’m starting to get the hang of it. That said, I am a lawyer, but I am not your lawyer. Nothing in this post constitutes legal advice. Questions in the comments (or by other means) are welcome but like any lawyer I will not give specific legal advice to people who are not my clients. Okay? Okay.
The gracious host of Lawyers and Liquor asked me if I could walk his readers through the basics of “intellectual property” law, which is, in general, the law of patents, copyrights, and trademarks. These matters are relevant to, well, pretty much everything you do, especially if you’re part of this Internet thing. And most people are a little fuzzy on them. But fear not! I am an expert on fuzzy subjects. In fact, my first patent was for a fuzzy subject. (I am completely serious: https://patents.google.com/patent/US5735521A/en.) So let’s see if we can keep this from turning into a complete furball, shall we?
First of all, if you want to see some fancy-schmancy PowerPoint presentations on the topic, you can look at this post on my blog. If you prefer your information imparted by helpful robots, you can look at this one. But for now let’s just hit the basics.
First: Intellectual property, unlike real property (i.e. land) or personal property (e.g. your computer) consists of a bundle of rights which are not tied to any physical object. They can control what you can and can’t do with physical objects, but they are independent of the objects. So if you have a drawing that you had somebody else make for you, what you have is a drawing. The copyright in that drawing does not necessarily belong to you, even if it’s the only copy, even if you paid the artist to draw it, even if you told them what to draw. The same is true of patentable inventions, etc. I know this is a strange idea, but please remember it. (If strange ideas bother you, I’m not sure how you ended up here in the first place, but that’s not important now.) Furthermore these rights are all negative. That is, all intellectual property rights do is give the holder the right to tell someone else they can’t do something. They do not give anybody the right, or the obligation, to do anything.
Second: For practical purposes, the three main types of intellectual property (patents, copyrights, trademarks) have nothing to do with each other. A trademark is not a copyright is not a patent. If a particular product is patented, contains copyrighted subject matter, and is sold in association with a trademark, the patent, the copyright, and the trademark could all be owned by different people or entities. Or there could be multiple patents, copyrights, and trademarks associated with any given product, all owned by different people. This gets complicated fast. So never assume that because you (think) you know something about a copyright associated with something, that you know anything about its trademark status, etc.
Third: For the most part, intellectual property does not cross national boundaries. A US patent cannot be enforced in China, a Canadian trademark cannot be enforced in Mexico. HOWEVER, he said in bold italic underlined all-caps, in many cases is not difficult to use intellectual property valid in one country to obtain similar rights in another country. And if you are infringing in such a way that people from a country where the the rights are valid are harmed, you may be reached by the holder of the rights even if you are not in such a country. Here there be monsters.
Okay, now that that’s clear (Ha!) let’s talk about three different kinds of intellectual property, or “IP” for short (insert Bart Simpson phone call joke here.)
A patent is the exclusive right to practice an invention. An invention is a novel and unobvious improvement upon the prior art in the field of the invention. In the US, any “process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” is patentable, and can be protected by what is called a “utility patent.” (Most other countries have similar legal provisions.) The other kinds of patents are “design patents,” about which more later, and “plant patents,” regarding which deponent sayeth not. Unless otherwise specified, “patent” usually means “utility patent.”
The important thing about patents is that to get one, your invention must be novel and not obvious. Novel just means that no substantially similar machine, etc, can already be known to the public. You can’t patent something we already know about. The reason for this is that a patent is essentially a reward from society: the fundamental principle is, “Teach us how to do something we didn’t know how to do before, and we will give you a monopoly on it for a limited time.” There’s no benefit to society from telling us how to do something if we already know how to do it, so no patent for you.
“Obvious” is a word that just doesn’t mean the same thing to a patent lawyer that it does to a normal person. It does NOT mean that your invention isn’t clever, or that it wasn’t hard to come up with, or that it’s not a a huge improvement on the way things are usually done. The best way I know of to explain when something is “obvious” for patent purposes is to put it like this: If a person of ordinary skill in the relevant art knew every relevant public reference in the history of the world, would it be trivial for them to combine some of those references and arrive at your invention? If so, it’s obvious. If it’s obvious, we already know how to do it. No patent for you.
Once you obtain a patent, which is an expensive, complex and perilous journey, as I said you have the exclusive right to practice it. Which means that anybody else who does practice it is infringing your patent and you can sue them for damages and get an order from a court to make them stop. It doesn’t mean you have to practice it: you can stash it under your bed for the patent’s twenty-year term if you want.
It also doesn’t mean you have to stop others from practicing it. If you want you can release it into the public domain. You can simply ignore infringers. Whatevs. Many companies and organizations stockpile what are called “defensive patents,” which are patents they don’t intend to enforce, but obtained simply to keep others from doing so and/or so that they would have ammunition for a counter-suit if they themselves were sued for infringing similar patents.
Similarly, there are no Patent Police. (Nor Copyright Police, nor Trademark Police.) The only person who can do anything about patent infringement is the patent holder. This is an important IP general principle: if the holder of the IP doesn’t know about an infringement, or doesn’t care to do anything about it, that’s that. That might not be smart (especially for trademarks, see below) but it is absolutely and always the case. (Except for consumer protection matters, which are outside the scope of this post.)
I should also say two words about design patents, which are weird hybrids of copyright and patent. If you want more details, you can read this post. But in general, a design patent is a patent on the ornamental design of a useful object. For instance, one could obtain a design patent on the unique design of a costume, even if one couldn’t patent the costume itself because we all know about costumes already, buster. Anybody who wants to make a costume can still make a costume, but that can’t make THAT costume during the design patent’s fifteen year term because of course they have different terms from regular patents. They still have to be novel and non-obvious, kinda sorta, but it’s much easier and cheaper to get them.
A copyright is the exclusive right to distribute and use original creative works. Again, these are essentially rewards from society: “Publish your art so that we can benefit from it, and in exchange we will give you a monopoly on it for a limited time.” The bar for getting a copyright is much lower than the one for patents: the work must simply be original. In the US and most other countries, copyright attaches to a work as soon as it is reduced to “tangible form.” This includes bits on a hard drive, by the way. The US is somewhat unusual in that to actually enforce a copyright, the copyright has to be registered with the US Copyright Office, which is part of the Library of Congress, because of course it is. But the copyright itself exists the moment the work is created.
Unlike patents, it is entirely possible for multiple people to have copyrights in substantially similar works so long as they didn’t copy them. (This is called “parallel development” or “independent re-creation.”) So if I draw a picture of a badger, and you draw a picture of a badger, even if they’re nearly identical we both have good copyrights as long as I can’t prove you copied my picture.
Once you have a copyright, you have the exclusive right to use, publish, copy, and distribute the copyrighted work. This includes making derivative works (works based on or incorporating the copyrighted work) which are not transformative enough to qualify as new and independent works. Once you sell an authorized copy, under most circumstances a legal principle called the First Sale Doctrine means that you can’t control what the rightful owner does with the physical copy they lawfully possess. However, it doesn’t mean they can create new derivative works with it, unless that was part of the license when you sold the copy. (Spoiler: It probably wasn’t.)
Unlike patents (mostly) there are circumstances where other people are allowed to use your copyrighted works even without your permission. The most common and most often misunderstood of these is the Fair Use Defense. Before I even get into what makes a Fair Use Defense, I want you to notice that last word, defense. When you allege a Fair Use, what you are doing is saying, “Yes, I did infringe your copyright, but it’s a Fair Use so I’m allowed.” In other words, you are admitting that you infringed. This is fraught with peril. If your Fair Use Defense fails, you are screwed. This is not a good position to be in. So please consider this before using something just because you think you have a Fair Use Defense.
If you want the details of Fair Use, you can read this post. In summary, there are four factors, plus the Zeroth Factor, which determine whether a use is a Fair Use. They have to do with the relative harm the use does to the copyright holder’s rights and how strong they were in the first place. If you don’t want to read the linked post, please at least remember this: “I didn’t charge,” and “I gave them credit” do not constitute a Fair Use. Period.
Trademarks are things which function to indicate the source of a good or service in the marketplace. In a sense, trademarks are more about consumer protection than they are about the rights of the individual mark holders. Unlike patents and copyrights, trademark rights are related to the way other people see the property: if the market associates your mark with your goods and services, you can exclude others from using confusingly similar marks in association with similar goods and services. If it doesn’t, you can’t. Even the term is different: patents and copyrights have limited terms (on the order of 20 years for patents, and on the order of 100 years for copyrights.) Trademarks remain effective as long as the holder uses them and they maintain their association in the mind of the marketplace: when either of those things stops, so does the term of the trademark. (Although not RIGHT THAT INSTANT.)
Trademarks are usually words, short phrases, or logos, but anything which can reasonably form an association with a good or service can be a trademark, including a color, a series of musical notes, or possibly even a scent. As long as the association can be shown, it can be argued that a trademark exists.
It should also be noted that consumers don’t have to know what the ultimate source of the goods and services are, only that the mark indicates a consistent source. “Budweiser” brand beer is brewed by Anheuser-Busch InBev SA/NV, a Belgian transnational beverage and brewing company. Anybody who drinks beer knows what Budweiser beer is like. Some of them may know it’s brewed by a company called something like “Anheuser-Busch.” Very few of them probably know it’s brewed by a giant Belgian conglomerate, especially since they try so hard to play up its American origins. Doesn’t matter. So long as people can reasonably rely on getting the same beer-sperience every time they drink a beer labeled “Budweiser,” “Budweiser” is the trademark for that beer.
As is probably obvious, trademarks are infringed when someone uses the trademark, or something confusingly similar to it, to market similar goods and services. There is a concept called “dilution,” “blurring,” or “tarnishment” that can make this a little muddy: the holders of famous marks can sometimes argue that use of the marks even for different goods and services would be unfair to consumers and/or diminish the value of the brand. Anheuser-Busch InBev doesn’t make cars (that I know of,) yet if you tried to sell Budweiser brand automobiles, they might have something to say about it. And even if they didn’t win, they could make you ring up enough legal fees to make you sorry you tried. So don’t do that.
Other than famous marks, the only time you have to worry about infringing trademarks is if you could cause confusion in the marketplace. So if you make it reasonably clear that your use is not associated with the brand, you’re fine. Of course that sounds simple in theory but in practice arguments about what constitutes a likelihood of confusion have put a whole lot of lawyer’s kids through college. If you have questions about what constitutes a non-confusing use, you should ask a trademark attorney.
Trademark holders are notoriously vicious about protecting the value of their marks: that’s because, as we learned earlier, they only have value if the association is maintained. So they will often react very aggressively to even the possibility that someone is infringing their marks in a way that might weaken them. Losing an association is called “genericization,” and it is the death of trademarks. When a term becomes generic for a type of good or service, it can’t be a trademark. For example, “xeroxing” becoming the generic term for photocopying. If the public associates “xerox” with all photocopiers, Xerox Corporation can’t claim a unique association with their photocopiers.
For the same reason, you can’t register generic words as trademarks in the first place: allowing you the exclusive use of the word “egg” to sell eggs would unfairly disadvantage all other competitors, so you can’t claim a trademark for Egg brand eggs. There is a whole continuum of trademark strength from “generic,” which can’t be used, to “descriptive,” to “suggestive,” to “fanciful,” to “arbitrary.” The further down that list you are, the stronger your mark.
4) Trade Secrets, Et Cetera
Frankly, trade secrets are beyond the scope of this post, but they are often referred to as a fourth main type of IP, so I thought I’d mention them. Trade Secrets are just that – secrets that are valuable in trade. In other words, if information provides a competitive advantage if and only if it is kept secret, it could be a trade secret and therefore protectable by law. Disclosing trade secrets when you have an obligation not to do it can get you sued and, in extreme cases, arrested. The purpose of non-disclosure agreements, commercially, is to protect trade secrets. Once a trade secret is disclosed, it becomes worthless, at least legally.
This is why you can never, EVER have a trade secret that is protected by patent, copyright, or trademark: you have to disclose inventions and artistic works to get a patent or a copyright, and if the public doesn’t know about your mark, it can’t be a trademark because no association can possibly form. Trade secrets can be used to protect the way you make products associated with trademarks: the best example is the “Eleven Herbs and Spices” which go into Kentucky Fried Chicken’s original recipe. If nobody knows how it’s made, the making process is a trade secret even if everybody knows about the end result.
There are other legal concepts which might be bundled under “IP law,” for instance “trade dress,” which is related to, but not the same as, a trademark. Or “Moral Rights,” which are mainly important in Europe and other places full of Commies, but which have rough equivalents in US law. But these are the basics. I hope you found this post helpful (or at least interesting.) Questions are welcome either in the comments, on Twitter, or by email.
Thanks for reading!
Consider the following quote from Friedrich II, King of Prussia, often referred to as Frederick the Great:
“He who defends everything, defends nothing.”
Consider also this quotation from Mark Twain’s Pudd’nhead Wilson:
Behold, the fool saith, “Put not all thine eggs in the one basket”—which is but a manner of saying, “Scatter your money and your attention”; but the wise man saith, “Put all your eggs in the one basket and — WATCH THAT BASKET.”
These were two pretty clever fellows, and when two clever fellows try to tell us the same thing*, it behooves us to listen. And I am certainly not averse to riding on their clever coattails to try to make a specific point along these lines. Specifically, regarding the registration of trademarks.
When one registers a trademark, one must specify both at least one class of goods and services – often referred to as the “IC,” for International Class, which is a series of 45 numbers that designate the truly bizarre divisions trademark offices like the United States Patent and Trademark Office use to categorize things – and the specific goods and/or services in association with which one is claiming exclusive rights to use the mark. Here’s an example:
|Word Mark||BLIZZARD ENTERTAINMENT|
|Goods and Services||IC 009. US 021 023 026 036 038. G & S: COMPUTER GAME SOFTWARE AND INSTRUCTION MANUALS SOLD AS A UNIT; MOUSE PADS. FIRST USE: 19940517. FIRST USE IN COMMERCE: 19941115|
This is what I would refer to as a “good example.” The registration has one class: IC 009, which is the class including computer software, hardware and accessories. It has two listed goods: computer game software, and mouse pads. Simple. Elegant, even. Well done, Blizzard Entertainment. (Tangent: IC 028 is for toys and games. It’s a common mistake for people to register computer games in IC 028 because they see “games,” and that’s just one extremely straightforward example of how confusing this gets.)
A little explanation is in order before we do a bad example. You pay for trademark registrations according to how many classes you want to protect. Each class is a flat fee – usually $225.00 in the US, but it varies. You can file for any number of classes in one application: you don’t get a discount for multiple classes, but if you’re paying an attorney (which, and I acknowledge I’m biased, you really, really should) you may save some in legal fees if you have them do all the classes at once.
However, what’s protected is not the class you register, but the goods or services you list in that class. For instance, this is for computer game software. If I wanted to make, say, a spreadsheet program, and use the mark “Blizzard Entertainment” in association with it, that would theoretically be okay (in this case it would be a very foolish thing to do but let’s not get into that) even though spreadsheets and games are both computer software and therefore both in IC 009. There is no theoretical limit to the number of particular goods and services you can list in a given class.
And now we get into defending egg baskets.
Here’s a bad example. At least, in my opinion. I apologize in advance for the wall of text: just scroll down to resume the article. If you are the impatient sort, click here to skip it.
|Goods and Services||IC 009. US 021 023 026 036 038. G & S: Downloadable computer game software for video and computer games; Downloadable computer game programs offered via social media Computer peripheral devices; Downloadable image files containing photographic images and artwork, and text in the field of video and computer games; Downloadable image files containing photographic images and artwork, and text in the field of video and computer games offered via social media; Downloadable music files; Downloadable ring tones for mobile phones; Downloadable electronic publications in the nature of e-books, online magazines, online newspapers, electronic journals, and podcast transcripts in the field of computer and video games; Headphones; Musical juke boxes; Microphones; Baby monitors; Mouse pads; Portable media players; Portable telephones; Sound recording, transmitting and reproduction apparatus; Spectacle cases; Spectacle frames; Sunglasses; Telephone apparatus; Blank USB flash drives; Video game cartridges; Cases for mobile phones, tablets, laptop computers and netbooks, portable media players, cameras and other photographic equipment; Downloadable electronic game software for use on mobile phones, tablets and other electronic mobile devices; Video game software; Downloadable interactive multimedia computer game programs; Downloadable interactive multimedia computer game programs offered via social media ; Downloadable computer software for mobile phones, tablets and other electronic mobile devices in the field of social media for the creation and exchange of user-generated content, marketing research, and also for transmission of electronic communications and also for posting advertisements; Downloadable software in the nature of a mobile application for use in the field of social media for the creation and exchange of user-generated content, marketing research, and also for transmission of electronic communications and also for posting advertisements; Downloadable computer application software featuring video and computer games; Computer application software for mobile phones, portable media players, tablets, handheld computers and other electronic mobile devices namely, software for video and computer games; Computer application software for mobile phones, portable media players, tablets, handheld computers and other electronic mobile devices namely, software for video and computer games offered via social media; Mobile phone accessories and charms, namely, danglers for mobile phones; Eyewear; Eyeglasses; Mobile phone accessory charms; Mobile phone covers; Radios incorporating alarm clocksIC 041. US 100 101 107. G & S: Educational services, namely, conducting classes, seminars, workshops in the field of games; Training in the field of games; Entertainment, namely, providing on-line games; Entertainment, namely, providing on-line computer games available on social media; Entertainment in the nature of computer games, namely, providing temporary use of non-downloadable computer games; Entertainment, namely, providing non-downloadable computer games online; Entertainment services, namely, providing online video games available on social media; Entertainment services, namely, providing temporary use of non-downloadable interactive games; Entertainment services, namely, providing temporary use of non-downloadable electronic games; Entertainment services, namely, providing a website featuring games and puzzles; Entertainment services, namely, providing online video games; Organizing sporting and cultural activities, namely, conducting tournaments, contests and competitions in the field of computer games; Amusement parks; Arranging and conducting workshops for educational purposes in the fields of computers, graphic arts and video games; Entertainment services in the nature of providing casino and gambling facilities; Electronic desktop publishing; Entertainment services, namely, production of live, televised and movie appearances by a professional entertainer; Film production services, other than advertising films; Gambling services; Providing on-line computer games via a computer network; Operating lotteries; Organization of electronic games competitions; Party planning services for others; Production of music; Entertainment, namely, production of television shows; Providing amusement arcade services; Hosting social entertainment events, namely, karaoke parties for others; Non-downloadable electronic publications in the nature of e-books, online magazines, online newspapers, electronic journals, blogs, podcasts and mobile applications in the field of games; Publication of books; Publication of electronic books and journals on-line; Scriptwriting services for non-advertising purposes; Writing of texts for others; Electronic games services provided by means of a global computer network; Entertainment services, namely, providing online electronic games; Entertainment Information; Entertainment services, namely, providing online electronic games for use on mobile phones, tablets and other electronic mobile devices; providing information on-line relating to computer games and computer enhancements for computer games; Entertainment services, namely, providing temporary use of non-downloadable single and multi-player electronic interactive games via the internet, electronic communication networks and via a global computer network; Entertainment services, namely, providing temporary use of non-downloadable single and multi-player electronic interactive games via the internet, electronic communication networks and via a global computer network and on social media; Multimedia publishing of software, specifically of computer game software, electronic games and video game software|
From: https://tsdr.uspto.gov/#caseNumber=86968772&caseType=SERIAL_NO&searchType=statusSearch. By the way, this is the same trademark registration I wrote a post for Indie Gamer Team about. See: https://indiegamerteam.com/2017/03/27/stupid-legal-tricks-chapter-1/
Look at that listing of goods. Look at it. That is nonsensical. Now, I was young and inexperienced once too. Don’t ask me about my first interaction with the NFL’s trademark counsel: it still aches on rainy days. But whoever did this ought to be ashamed of themselves. (I know who did it. It’s in the TSDR listing. But let’s be gracious.) This is obviously a trademark attorney unfamiliar with Fred’s advice: they are trying to defend everything, and they are running a very real risk of defending nothing.
Never mind the ethics of running the meter while all that redundant nonsense was entered into the PTO’s online filing system. (Many firms charge flat fees for filing trademark registrations, which would avoid that issue altogether.) The first problem is that now they have an obligation to monitor the stream of commerce for all this stuff. There’s no point in registering a trademark for goods and services you don’t sell. Once you do, if you don’t watch out for people selling similar goods and services with a confusingly similar mark, you can lose your exclusive right to use it in various ways. That is a lot of eggs to watch. The costs, both monetary and opportunity costs, of doing so are not trivial. But more on that later.
Because the real problem is that when you enter your listing of goods and services, you are affirming to the PTO that you really do sell all the goods you are listing**. This is to prevent people from trying to stake out territory which they aren’t entitled to protect. The purpose of trademarks is to allow the public to associate goods and services with a particular source, and if you’re not a source of those goods and services you shouldn’t be allowed to prevent other people from offering them under the guise of trademark protection.
Now, King.com Limited is a successful company, a veritable mighty oak of industry whose branches spread far and wide, sheltering vast fields of commerce ‘neath their benevolent shade. But do they really make baby monitors with this mark on them? Is there really a “Super-With-Colorful-Fruits”-brand amusement park somewhere, perhaps adjacent to their sprawling corporate headquarters on Malta? I am willing to be proven wrong, but I hope you’ll forgive me if I’m somewhat dubious that this listing of goods and services is entirely accurate.
“But the Patent and Trademark Office gave them the registration,” you might say. “Isn’t it just smart lawyering to try to get what you can? If you cut a little bigger slice of cake than you should have, can’t you just put some back on the plate if need be?”
If you list goods and services you don’t sell and/or have no specific intent to sell on a registration, you may have committed a “fraud on the Office,” as the legal term of art goes. And one potential sanction for committing a fraud on the Office is having your registration cancelled. Not just the part that was in error. Not just the class which was in error. The whole registration. Which makes it much harder to protect your trademark. Not impossible: we’re not going to punish the public for your mistake. But much harder. Also, it makes the lawyer who filed it look extremely bad. But that’s their problem. We’re worried about King.com, who theoretically do have a valid interest to protect here.
By trying to defend everything, they have put themselves at risk of defending nothing. Imagine the fun opposing counsel would have putting somebody from King.com on the stand at a hearing and listing out all the alleged goods. “Do you really make baby monitors? Is there a Super-with-colorful-fruits brand roller coaster in your parking lot?” Assuming they may have been a little overbroad in their listings, their credibility would be destroyed. Now, either they make a particular thing with the mark on it or they don’t, and that wouldn’t be hard to prove. But whoever’s conducting the hearing is only human, and that kind of thing leaves an impression. Plus of course there’s the whole “Did you commit perjury or are you just ignorant?” thing to contend with. Again, makes people look extremely bad. Don’t do that.
Now that Fred has had his due, let’s talk about Mark’s egg basket.
Aren’t I being contradictory? Wasn’t King.com, through its attorneys, trying to put all its eggs in one basket? In a sense, the sense that they put everything they could think of in the registration listing, they were. But in the broader sense, they were not. The eggs in question here are not the marks, nor the individual goods,*** but the valuable associations between the mark and any individual good offered by the registrant. A solid association is the essence of a trademark. And by scattering what one assumes are the actual associations (i.e., the real goods which are important products to King.com’s business and which are sold in association with the mark) in that giant morass of stuff, they have taken them out of the basket and chucked them all over the field. They are scattered far and wide, and instead of a tidy basket of business-critical marks to protect you have a giant field covered with a few important marks and dozens of trivial ones which you must guard ceaselessly. Not the best approach, in my humble opinion.
And, in the not-so-distant future, a much more hazardous one as well.
Here’s why: Under the current procedures, an applicant is only required to submit one specimen (proof that they are using the mark in association with the goods, h/t @proofofuse) per class. That means that for the registration I cited above, King.com may have only had to submit two specimens, because all the marks are either for IC 009 or 041. So they could, theoretically, find things they really do make, like a computer game, submit proof of use for that, and they’re covered for, say, online newspapers. Now, again, I’m not saying that King.com has done anything wrong. For all I know they have Super baby monitors installed on each and every Super roller coaster marketed in Malta’s finest Super online newspaper. The fact that they’re using an international registration as the basis for their US registration also complicates things and again, let’s not get into that. But as an example of the potential for abuse of the system by submitting cherry-picked specimens for each class, it does the job.
The PTO is well aware that people (not pointing any fingers) can do this, and it’s getting worse as the number of registration applications increase and people, pardon my old, get stupider. They have initiated a new rule which allows them to audit registrations. Under the new rule:
...the USPTO may require the submission of information, exhibits, affidavits or declarations, and such additional specimens of use as may be reasonably necessary for the USPTO to ensure that the register accurately reflects marks that are in use in commerce in the United States for all the goods/services identified in the registrations, unless excusable nonuse is claimed in whole or in part.
This is right now still sort of a limited test program, but the final rule has been adopted. They can do this to any registration at any time, and they could require it for all registrations at any point. I for one could not be more pleased at this prospect. But attorneys who prefer what I call the “shotgun” approach to trademark registration listings are going to be in a world of hurt when this kicks in. They need to stop, and they need to stop now. They need to find the important eggs, put them in a nice strong basket, and watch that basket. Not only because it’s the right and legal thing to do, but because it will endanger their clients’ interests not to do it.
Finally, yes I am aware that often clients drive a lot of this nonsense. They get hold of the link to the Manual of Goods and Services, or some first-year associate trying to be thorough sends them a ginormous list of potential goods and services listings, and they get all excited. “Yes!” they cry. “Yes, we want all of that! Of course we are going to make roller coasters with baby monitors and advertise them in our online newspapers! Mike, send that list over to Product Development, stat! And in the meantime, put us down for one of each!”
Well, it’s your job as a trademark attorney to stop them. You must make clear to them that that isn’t a good idea, for all the reasons I’ve set forth. (Feel free to crib off me.) Explain to them that overreaching will give them so much to defend that they will divide their attention to the point where they can defend nothing. Don’t give them what they think they want: give them what they need, and tell them why. In the end, they will thank you for it.
Thanks for reading. If you have questions or further thoughts, please feel free to make a comment on this post. Engaged readers are the best!
*Well, okay, according to this article the Mark Twain part originated with Andrew Carnegie, but be that as it may.
**You can file “Intent to Use” registrations which do stake out territory you’re not actively using yet, but among other limitations you’re still affirming that you have a bona fide intent to use the mark with the particular goods and services you’re listing. “Roller coasters are fun, I might build a couple, who knows?” is not a bona fide intent to build an amusement park.
So, first, to get it over with: I wrote a book. It’s called My Mother Had Me Tested! and it’s a collection of funny mad science/geek-related short stories. Please have a look. If you think you might enjoy it, please read the free sample. If you still think you might enjoy it, please buy it. Here’s the link: http://amzn.com/B00WFV3YZU
Now that the plug is done – and I would never suggest that you should buy my book to make the rest of this post easier to follow, no way, not for a minute – I’m going to go over some of the potential legal issues involved with the publication of my book, My Mother Had Me Tested!. (Okay, I’ll stop now. From here on out it’s just MMHMT, and no more links. Promise. 🙂 )
Also, please keep in mind that nothing in this post is intended to be legal advice. I am reviewing my own work and pointing out generally interesting issues regarding it. My goal is not to provide specific answers to legal questions, but show examples of how one might approach these issues, and help you to be more aware of the potential for liability which your own creative endeavors might create. Always consult an attorney licensed in your jurisdiction and familiar with the relevant law *ahem* before making legal decisions.
On with the review!
ISSUE ONE: COVER ELEMENTS
This one’s easy. I licensed the cover illustration from an online stock photo company called CanStockPhoto. They have a required copyright disclaimer: I included it. The font I used I found online and, after review, I decided that my usage of it for this purpose was acceptable. (Digital font files, by the way, can be copyrighted. Generally speaking, type itself cannot.) There’s no visible person, actual or not, so I don’t have to worry about a likeness release. (More about use of likeness below.) If there were, I’d need one or need to make sure the person I licensed the photo from had one. Stock Photo sites usually make this clear – if it’s marked “editorial,” you probably shouldn’t use it for commercial purposes. If it’s not, it’s probably released, but you should still check. If you commission a cover photo or illustration, make sure your artist provides a likeness release as well as a copyright license if necessary.
Finally, I made the cover myself, so I didn’t have to worry about the copyright on the assembled elements. If I’d had an artist do it for me, I’d have needed a copyright license, but I didn’t, so I didn’t. Next question!
One of the most common questions related to intellectual property is, “If I don’t charge for (some infringing use like copying characters or whatever) it’s okay, right?”
No, it is not okay.
Here’s an easy way to think about whether giving things away is going to help you when you’re using somebody else’s intellectual property:
Mostly, whether or not you made any money is relevant to calculating damages* and if you’re calculating damages it means YOU’VE ALREADY LOST THE CASE. So just ask yourself: “Do I want to be on the losing side of a case filed by a multbillion-dollar company?” Then proceed accordingly.
*It can be relevant to a Fair Use defense, but again, that’s a defense. If you’re using a defense, it means you have already conceded that your use was, absent the defense, infringing. That’s not a good place to be when, again, your opponent may be a multibillion-dollar company which spends more every year on coffee for lawyers than you’ll make in your whole life.