We’ve all heard any number of “Urban Myths”, such as there are alligators living in the sewers in New York City and Little Mikey from the “Life” cereal commercial died because he mixed Coca-Cola with pop rocks. There are plenty of widely-held general legal myths too: “possession is 9/10 of the law” and “a verbal contract isn’t any good” are two common legal myths. In our experience, there are dozens of legal myths pertaining to trademarks – as well as other forms of intellectual property such as copyrights and patents. In our new weekly blog series we will be introducing the top ten most common myths we have heard over the years. Each week will feature a new Myth, so here is Myth #10:
We continue with BMBR LLP’s SHATTERING TRADEMARK MYTHS FOR NON-INTELLECTUAL PROPERTY LAWYERS (+ SOME COPYRIGHT MYTHS TOO!)
Myth #10:
“If I trademark my idea for book, movie or TV show then nobody else can steal it.”
Reality: No, trademarks (and service marks) are brand identifiers such as a word (or combination of words) and/or logo design (and even a sound or smell) that identify a product or service and distinguish it from other similar products or services. For example, both Famous Amos® and Mrs. Fields® are trademarks for cookies that identify the source of the cookies and distinguish them from other cookies. The same is true for McDonald’s®, the golden arches and Burger King®. On the other hand, the best way to protect a book, screenplay, movie or TV show is by a copyright registration. And, by the way, ideas by themselves can rarely be protected in the abstract.
Myth #9:
“When I name my company or product I am better off making it very common and descriptive so that my customers and potential customers will immediately know what it is that I sell.”
Reality: No, although logically we think that our business and product names should tell the public what the product is, the law as it applies to names, trademarks and brands is very clear that trademarks must be unique, clever, non-generic and non-descriptive. Generic terms are free for everyone to use. If you want to open a store that sells windows and doors exclusively, you shouldn’t be allowed to exclusively appropriate the name “Windows & Doors Exclusively” or “The Window & Door Store”. Thus Apple® is a very protectable trademark for computers because apples have nothing to do with computers in the real world. But “Apple” would be a totally unprotectible and worthless trademark for a line of apple sauce or apple juice. Likewise, Greyhound® is a strong trademark for a bus company but is worthless as a trademark for a dog breeder who specializes in breeding greyhounds.
Myth #8:
“If my name or trademark is only a little bit similar to someone else’s trademark and isn’t exactly the same, I have nothing to worry about legally.”
Reality: No, the legal test for trademark infringement is not whether the two trademarks are identical. The test is whether the two trademarks in questions are confusingly similar such that the public might be confused into thinking that trademark #2 comes from the same source as trademark #1 or that the owner of trademark #1 endorses, sponsors, or is otherwise affiliated with the user of trademark #2. Hence “XERAX” for a line of photocopiers is legally too close to ZEROX® even though they are not identical. One court has even held that LOLLIPOPS as the name of an indoor roller-skating rink was too close to the name JELLYBEANS as the name of an roller-skating rink because the public could be misled into thinking that the LOLLIPOPS rink was affiliated with the JELLYBEANS rink because they evoked similar commercial impressions.
Myth #7:
“I don’t really need to bother registering my company or product and trademark; all I need to do is put the circle “R” ® next to my name.”
Reality: No; simply putting the ® symbol next to your company name or product name is not enough. First, using the ® symbol isn’t legal if you haven’t officially registered your trademark with the US Patent & Trademark Office (“PTO”). More importantly, when you register your trademark with the PTO you will be entitled to a number of additional legal benefits that will strengthen your brand and trademark legally. Chief among these is the presumptive light to national use of the trademark on the goods or services you have registered the trademark for.
Myth #6:
“If I look up the name/trademark I want at the Patent & Trademark Office website and don’t see anything that is the same for the same product, I’m in the clear and I’ve got nothing to worry about.”
Reality: No, just because you do not see a conflicting trademark application or registration at the PTO website doesn’t mean there aren’t any legal conflicts out there. Reason: trademark rights in the U.S. generally arise from use of the trademark – whether or not it is officially registered. These are referred to a common law trademark rights. Thus, in some cases the owner of common law trademark rights can successfully sue and stop someone else from using the same (or similar) trademark even if the other person officially registered the trademark at the U.S. Patent & Trademark Office first. Additionally, it is not necessarily true that someone else’s use of the same trademark for a different product isn’t a legal conflict with your trademark. See Myth #8 about regarding the JELLYBEANS vs. LOLLIPOPS dispute.
Myth #5:
“I own a domain name for my company and/or product; I don’t need to bother registering my name as a trademark.”
Reality: No, a domain name registration is not a substitute for an official trademark registration. Mere ownership of a domain name registration will not give rise to the same legal rights as an official trademark registration and does not necessarily give the owner of the domain name registration the right to claim trademark infringement against the second user. The domain name registration may give the owner of the first domain name the right to seek cancellation of the second user’s domain name via an online domain name dispute arbitration procedure, but that process may be much more difficult without an official trademark registration and it certainly will not allow the owner of the first domain name to seek financial damages against the second user.
Myth #4:
“I already own one domain name for my company, product or service; that’s all I need.”
Reality: No, not these days. Most domain names are relatively inexpensive to own – approximately $12 per year. It is a lot less expensive to buy a batch of domain names related to your core trademark and occupy some “Internet real estate” than it is to hire a lawyer to send out a cease and desist letter each time someone adopts a domain name that is similar to yours. Thus, for example, if your core trademark is NAKED SURF for your surfing retail store, we recommend buying several domain names such as: nakedsurf.com; nakedsurf.net; naked-surf.com; naked-surf.net; nakedsruf.com, etc. etc. etc. We even recommend that you buy the domain name nakedsurfsucks.com. Reason: block out the inevitable hater out there. The trick is to set an annual budget for your domain names and buy as many domain names as you can within your budget.
Myth #3:
“I own a trademark registration for my clothing line; no one else can use my trademark else for anything else like restaurants or building materials.”
Reality: Not necessarily. Just because you own a trademark and a trademark registration for one product or service doesn’t mean that you can stop using the same trademark for a completely unrelated product or service. If there is no likelihood that the public will be confused by the use of the same trademark on different goods or services, it is unlikely that a court will stop the other person from using your trademark. For example, the makers of CHAMPION auto spark plugs and the CHAMPION line of clothing have co-existed for years because their product lines are so different.
Myth #2:
“I want to trademark my name but I can’t afford it right now; I’m going to get into big legal trouble.”
Reality: Not necessarily. The insider secret is that a formal trademark registration is NOT a legal pre-requisite to ownership of trademark rights. Rather, trademark rights in the U.S. generally arise from use of the trademark in interstate commerce (across states lines). These are referred to a common law trademark rights. In fact, in some cases the owner of common law trademark rights can successfully sue and stop someone else from using the same (or similar) trademark even if the other person officially registered the trademark at the U.S. Patent & Trademark Office. Having said that, officially registering your trademark sooner rather than later is very advantageous if you ever have to stop an infringer from using your trademark.
And the #1 Myth of all time, is………
“If I can access it on the Internet, I am allowed to use it for free and no one can stop me.”
Reality: No, the mere fact that something can be found on the Internet doesn’t automatically mean that it’s free for anyone to use any way they want to. In other words, the fact that something can be found on the Internet doesn’t put it into some kind of special legally -exempt zone. For the most part, the rules about using other people’s content that exist in the real world are applicable to content that can be found on the Internet.
(see next the next post for more fun legal myths…..)