trademark

Trademark Basics from the USPTO - Hurdles to Filing a Trademark Application

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How do I protect my brand? It seems like a simple question, but it doesn't always have a simple answer.  One route of protection is through a trademark registration. The U.S. federal trademark application process can be confusing.  Here are a few things the U.S. Patent and Trademark Office believes all applicants need to know before they get started.

The Trademark Application Process is a Legal Proceeding

  • You may file a trademark application without an attorney. But, if you want legal advice you should consider an attorney that practices trademark law.
  • Foreign attorneys and non-attorneys who work for trademark filing companies are not permitted to advise you, help you fill out a form, sign documents for you, or take actions on your application for you.
  • Hiring someone who is not allowed by the USPTO’s rules to represent you can delay your application and jeopardize its validity.
  • You sign a trademark application under "oath." When you sign the application you are saying, "I swear what I state is true."

Your Trademark Application Must Meet Numerous Legal Requirements/Hurdles

  • Is your trademark federally registrable?
  • Can you properly identify your goods or services?
  • Can you identify the proper filing basis for your application?
  • Has your trademark been used in interstate commerce?
  • Who is the actual owner of the trademark?

To help you navigate the trademark process you can search the USPTO website for guidance and read the "Basic Facts About Trademarks" guidebook

More answers to your questions can be found on Texas trademark attorney Tamera Bennett's website here.

My Trademark is Being Used As A Twitter Handle. Now What?

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Patrick Lewis contributed to this post.

What can I do if a Twitter-squatter creates a username using my registered trademark and holds it for ransom?

Twitter’s Trademark Policy

Using a company or business name, logo, or other trademark-protected materials in a manner that may mislead or confuse others with regard to its brand or business affiliation may be considered a trademark policy violation.
— Twitter Trademark Policy

If you have a U.S. federally registered trademark, you have options for securing the Twitter handle. Twitter’s policy prohibits third parties from using a third-party federally registered trademark as a username if the third party is using the account in a misleading or confusing way. Be aware that not every handle that is identical or similar to a registered trademark is a violation. There may be “fair use” factors that come into play in the instance of fan usage and parody.  

To file a trademark claim with Twitter you’ll need to be able to answer the following questions:

  • Is someone impersonating my brand
  • Is someone infringing my trademark
  • Contact information for the brand owner
  • Your affiliation/relationship to the brand owner
  • The trademark registration numbers
  • The third-party Twitter handle
  • How the third-party is impersonating or infringing the trademark

Twitter’s Inactive Account Policy

Waiting may pay off in acquiring a Twitter handle. An account is deemed inactive when the user has not logged onto the account in over 6 months. When an account is removed, the username is up for grabs. However, it is difficult to tell if an account is active or inactive since activity is based on logins and not tweets.

Twitter’s Anti-Squatting Policy

If you receive a solicitation to purchase a Twitter handle that is the same or similar to your federally registered trademark, contact Twitter.  Twitter’s anti-squatting policy protects against “Attempts to sell, buy, or solicit other forms of payment in exchange for usernames are also violations and may result in permanent account suspension.”

Twitter evaluates the following factors in a “squatting” claim:

  • the number of accounts created;
  • the creation of accounts for the purpose of preventing others from using those account names;
  • the creation of accounts for the purpose of selling those accounts; and
  • the use of third-party content feeds to update and maintain accounts under the names of those third parties.

Twitter will not release squatted usernames except in cases of trademark infringement. It’s worth noting that Twitter may require proof of an attempt to sell a username in order to enforce its policy.

Practice Pointer

As your company or clients develop new brands, check across the social media platforms to see if the handle/username is available.  This can be performed as part of a trademark knock-out search. If the brand name is clear, then secure the social media handle/usernames.  An ounce of prevention is always worth a pound of cure – or the hassle of trying to secure the Twitter handle after the fact.

 

 

 

How Can I Protect A Trademark For My T-shirt?

You've just developed a catchy new phrase or word that you want to protect as a trademark. Maybe you went so far to already file a trademark application and received an office action refusing your application. What went wrong?

What Can I Do To Protect The Trademark On My T-Shirt (or other clothing)?

Simply putting a phrase on a t-shirt does not convey to the world that you are using the phrase as a trademark or brand. In fact, if you try to register a phrase as a trademark and the only thing you submit as your evidence of use is a t-shirt with the phrase across the front or back, you will receive an office action denying your trademark application stating your slogan is "merely ornamental" or decorative in nature. 

After the "Slants" Ruling ...

On June 19, 2017 the U.S. Supreme Court ruled the disparagement clause of the U.S. Trademark Act is facially unconstitutional under the First Amendment's Free Speech Clause. These means that trademarks like the "The Slants" for musical groups and t-shirts, or "Dikes on Bikes" for videos will be able to proceed with registrations. The key is using the phrase or word as a trademark and not as ornamental or decorative. Keep reading for tips on proper use of your trademark on clothing.

Size Matters For Trademarks On Clothing

Typically the smaller and more discrete a mark is used on clothing, the more likely the U.S. Trademark Office will consider the use as a trademark. Wording or design located on the pocket or breast portion of a garment (for example, a small design of an animal) may create the commercial impression of a trademark, whereas a larger depiction of the same wording/design prominently displayed across the front of a garment may be more likely to be seen as a purely decorative or ornamental feature of the goods.

Where Can I Place My Trademark On My Clothing?

The U.S. Trademark Office will be looking for trademarks to be in the neck of shirt or the band of a pair of pants. Also, on hang-tags attached the garment or product packaging.  If you offer your goods for sale on line, then make sure to use the trademark in close relation to the cart for checkout.

Here's a document that provides examples of how to properly place your trademark on clothing.

Why You Can't Trademark The President's Name

why-cant-i-register-a-trademark-with-the-presidents-name #createprotect #trademark

In every election year, we see a flurry of trademark applications filed by individuals that want to profit off a candidate's name. Maybe they are for the candidate, or perhaps against. Either way, filing a trademark application that includes, Trump, Hillary, or Bernie is always a waste of time and money.

Since January 1, 2016 over 100 trademark applications have been filed with the U.S. Patent and Trademark that have some reference to "Donald Trump." The applicants filing the marks are not "the Donald" or any business associated with Trump. Those applications have been or will be denied.

Here's Why You Can't Register A Trademark With The President's Name:

 Denied registration for not having permission to use Donald Trump's name or image.

Denied registration for not having permission to use Donald Trump's name or image.

1.  You don't have permission: You need permission to use a person's name in a trademark registration.  You'll get this response in an office action refusing your application: Registration is refused because the applied-for mark consists of or comprises a name, portrait, or signature identifying a particular living individual whose written consent to register the mark is not of record.   Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §1206.  Without written consent, you will not be able to secure a trademark registration.

2.  Most likely you are not using the phrase, slogan, or mark as a trademark: If you decided to produce t-shirts, hats or other clothing using the candidate's (or President's) name or likeness, you may get a refusal that your use is merely ornamental. Registration is refused because the applied-for mark as used on the specimen of record is merely a decorative or ornamental feature of applicant’s clothing and, thus, does not function as a trademark to indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others.  Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127.  With respect to clothing, consumers may recognize small designs or discrete wording as trademarks, rather than as merely ornamental features, when located, for example, on the pocket or breast area of a shirt.  Consumers may not, however, perceive larger designs or slogans as trademarks when such matter is prominently displayed across the front of a t-shirt. 

Trademark Application Review Process is Bi-Partisan:

Don't worry that some trademark applications may be accepted and other's denied just because the trademark examining attorney is Republican or Democrat. The rules are applied equally. Since 2008 over 150 trademark applications have been filed by people not related to President Obama that contain the word Obama. Those applications have all been denied registration.

 Denied for not having consent to use Obama's name. This application was filed by POM Wonderful. You would think they wouldn't have any tried.

Denied for not having consent to use Obama's name. This application was filed by POM Wonderful. You would think they wouldn't have any tried.

7 Questions for Authors to Ask Before Signing a Book Contract

Media and copyright lawyer Tamera Bennett presented 7 Questions for Authors to Ask Before Signing a Book Contract to the students enrolled in the "Author's Job" course presented by Creative Enterprises Studios.

Seven Questions for Authors to Ask Before Signing a Book Contract:

  1. Who owns the copyright in my book?
  2. How do I register a copyright?
  3. What are the options for publishing my book?
  4. What rights will the book publisher want?
  5. What will I get paid?
  6. When will I get paid?
  7. How can I cancel the book contract?

Bonus topics on trademark law and book publishing:

You can view the slide show above.

 

 

Protecting Your Business Trademark - Interview with Texas Trademark Lawyer Tamera Bennett

How Do I Protect My Business Trademark #trademark #intellectualproperty#createprotect Attorney Tamera H. Bennett

Whether you're a big or small business, you need to know how to protect your brand. Texas trademark lawyer Tamera Bennett was interviewed for Insureon to help business owners answer the following questions:

  1. Why do I have to defend my trademark?
  2. How can I protect my business from a trademark lawsuit?
  3. What do I do if my business is accused of trademark infringement?

Click here to read the full article and trademark attorney Tamera Bennett's responses.

Real Trademarks in Virtual Game Worlds - VIRAG

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Video games have become so realistic sometimes I struggle to tell the difference on a computer or TV screen between what's real and what's virtual. Game developers include familiar trademarks and brands to bring authenticity to the game.

First Amendment v. Trademark

In the United States, creative works are protected as free speech by the First Amendment.  Because of that protection for the whole work, a balancing act must occur between the rights of the trademark owner and the First Amendment rights that arise in the creative work.  Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).  If the court determines there is a likelihood of consumer confusion, it will then balance the trademark rights against the freedom of expression rights.

The standard test is is the two-prong Rogers test:  1) whether the use of the third-party trademark has artistic relevance; and 2) if so, is it deliberately misleading as to the source or content of the work.  Rogers and the cases adopting its holding have consistently framed the applicable standard in terms of confusion as to the defendant's artistic work as a whole and not solely the alleged use of the defendant’s trademark.

It would probably be helpful to jump over to Tamera's article Is That Fair (Use)? Third Party Trademarks in Film, Print, Video Games and other Media for some basics on the topic of fair use and trademarks and more background on application to video games.

Virag, S.R.L. v. Sony Computer Ent. America LLC

Race cars don’t seem to bring any new twists to the Rogers test. In Virag, S.R.L. v. Sony Computer Ent. America LLC, 3:15-cv-01729 (N.D. Calif. 2015), Virag, a flooring manufacturer, sponsors the Rally of Monza Track in Formula 1 racing. This means their trademark is visual around the track. And, one of their owners, Mirco Virag is a Formula 1 race car driver.  In 2010, Sony released the race car driving simulation game Gran Turismo 5 including a simulation of the Monza Track and the VIRAG trademark on a bridge in the game. The VIRAG mark was also used in Gran Turismo 6.

The court applied the Roger’s test on a Motion to Dismiss holding: 1) Since the game is focused on having a realistic race experience, using the VIRAG mark has some artistic relevance to the video game; and, under prong 2) there was no intentional misleading of consumers as to sponsorship. Gran Turismo 5 and 6 are race car simulation games. Because the VIRAG mark was used on the track and not on a race car, the court found the use was not intentionally misleading to consumers. Compare the holding and discussion in Electronic Arts, Inc. v. Textron, Inc., No. C 12-0018 (N.D. Cal. July 25, 2012).

The result of each video game case is fact-determined. What does that mean? Simply, the facts of the case determine the outcome. There's not a clear yes or no answer as to whether or not it's fair use to use a trademark you don't own in your video game.

Texas trademark lawyer Tamera Bennett will share even more of her thoughts on this topic at the TexasBarCLE Advanced IP Conference on February 18, 2016.
 


Entertainment Law Update Podcast - Live - Belo Mansion - September 23

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Tamera Bennett and Gordon Firemark meet up in Dallas to record Episode 66 of the Entertainment Law Podcast - live - in front of a studio audience.

Join us at the Belo Mansion, Noon on September 23, 2015 for lunch, CLE, and the Podcast.

We will discuss the latest ruling in Lenz v. Universal (aka Prince v. The Dancing Baby). Other topics include extensions to the Canadian Copyright term, the latest in Fashion law and IP rights, and "knock-knock," "who's there?" "Stolen Joke on Twitter. Take it down."

 

Dallas Bar Association

Belo Mansion

2101 Ross Avenue

Dallas, Texas 75201

214-220-7400

When Your Legal Blog Takes On The World

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World dominance wasn't our goal. But, a little blog featuring current issues on trademark, copyright and entertainment law has readers from 128 countries.

One thing trademark lawyer Tamera Bennett enjoys is helping U.S. clients protect their trademarks and copyrights in foreign countries. Most people don't realize that a federal U.S. trademark registration does not extend to Canada, Mexico or other foreign countries.

When your brand is launching outside the United States of America, you need a plan for protecting your trademark in foreign countries. There may be certain benefits to timing the filing of trademark applications in foreign territories based on when you file a trademark application with the U.S. Patent and Trademark Office.

Give Texas trademark lawyer Tamera Bennett a call when you are ready to take on the world.

CLE - Copyright and Trademark Primer- Webcast and Replay

tamera-bennett-dyan-house-copyright-trademark-webcast

REPLAY WEBCAST!
MCLE Credit: 1 hr
Texas MCLE No: 901315062
Registration Fee: $85
Register for Webcast

How do I protect my copyrights and trademarks?

This program covers the basics of copyright and trademark law for the non-IP attorney. It's also perfect for the the business owner who wants to understand brand protection.

The program addresses the most commonly asked questions about copyright and trademarks, including: What are the differences between copyrights and trademarks? How do you get protection for your copyrights and trademarks? What are the advantages of registration? What do I do if I think someone has infringed my work? Am I covered if I just put my work in an envelope and mail it to myself?

Learning Objectives:

  • Understand the differences between copyrights and trademarks
  • Learn how to protect copyrights and trademarks
  • Identify issues relating to infringement - both when you think someone is infringing your rights and what to do when someone has accused you of infringement

Speakers:

Ms. Tamera H. Bennett, Lewisville
Bennett Law Office, PC

Ms. Dyan Michele House, Dallas
Carter Scholer Arnett Hamada & Mockler, PLLC

Register:

Watch in the comfort of your own home or office! If you cannot watch the entire webcast at its scheduled time, register now and watch it when the recording is available after the broadcast. You will have until to March 31, 2016 complete the program at your convenience!

 

Is That Fair (Use)? Third Party Trademarks in Film, Print, Video Games and other Media

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This article was written by Dallas-area trademark lawyer Tamera H. Bennett with great assistance from Video Game Lawyer Zack Strebeck.

Introduction

Brands are everywhere. According to the U.S. Patent and Trademark Office, 193,121 trademark registrations were issued in 2013 alone.  With brands pervading our daily lives, we’re accustomed to seeing those brands show up in alternate realities such as film, TV, comparative advertising and even video game worlds.

Is a “brand” any different than a trademark? Not really.  Brand is the pop culture term for a trademark.  A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.  A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.  Throughout this article, the terms “trademark” and “mark” refer to both trademarks and service marks.

Trademarks enable the public to recognize goods or services as originating from a particular source. A trademark owner can stop others from using its trademark in order to prevent the public from being confused about the source of the goods or services. Use of another’s trademark may be permissible as “fair use” if the use does not infringe the trademark. We are going to take a look at how a third party may successfully and sometimes unsuccessfully use a trademark they don’t own in a media context.

I.          Fair Use and Trademarks

A.        Descriptive Fair Use

What do we do when a trademark also describes a person, a place or an attribute of a product?  A trademark owner can’t have exclusive rights in such use as too many terms would be taken out of the language for commonevery day usage. Trademark law recognizes a defense where the mark is used only "to describe the goods or services of [a] party, or their geographic origin." 15 U.S.C. § 1115(b)(4). "The [descriptive] `fair-use' defense, in essence, forbids a trademark registrant to appropriate a descriptive term for his exclusive use and so prevent others from accurately describing a characteristic of their goods.” New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 306 (9th Cir. 1992).

When the allegedly infringing term is ‘used fairly and in good faith only to describe to users the goods or services of [a] party, or their geographic origin,’ Lanham Act § 33(b)(4), 15 U.S.C. § 1115(b)(4) (1976), a defendant in a trademark infringement action may assert the "fair use" defense. The defense is available only in actions involving descriptive terms and only when the term is used in its descriptive sense rather than its trademark sense.

Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 791 (5th Cir.1983) quoting Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1183 (5th Cir.1980). The court held in Zatarain’s that “Fish-Fri” is a descriptive term for coating for fish.  The term “Fish Fry” may be used by a competitor in its ordinary, descriptive sense.

B.        Nominative Fair Use

Sometimes there is only one way to convey a message.  And, when that situation arises, use of a third-party trademark will be considered fair use. In addition to a statutory descriptive fair use, we now have a judicial carve-out for nominative fair use.

With many well-known trademarks, such as Jell-O, Scotch tape and Kleenex, there are equally informative non-trademark words describing the products (gelatin, cellophane tape and facial tissue). But sometimes there is no descriptive substitute . . . when many goods and services are effectively identifiable only by their trademarks. For example, one might refer to "the two-time world champions" or "the professional basketball team from Chicago," but it's far simpler (and more likely to be understood) to refer to the Chicago Bulls. In such cases, use of the trademark does not imply sponsorship or endorsement of the product because the mark is used only to describe the thing, rather than to identify its source.

The concept of nominative fair use is what allows us in the U.S. to have comparative advertising, parody and noncommercial use of trademarks.

New Kids at 306. To prove nominative fair use, a defendant must satisfy three requirements: (1) the plaintiff's product or service in question must be one not readily identifiable without use of the trademark; (2) only so much of the mark or marks may be used as is reasonably necessary to identify the plaintiff's product or service; and (3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.  E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc., 444 F.Supp.2d 1012, 1029 (C.D.Cal.2006).

The concept of nominative fair use is what allows us in the U.S. to have comparative advertising, parody and noncommercial use of trademarks.  A woman who was a Playboy Playmate should be allowed to describe herself in the capacity without infringing the trademarks.  Playboy Enters., Inc. v. Welles, 279 F.3d 796, 801 (9th Cir. 2002). The court agrees saying the use of the Playboy trademarks is nominative.

While comparative advertising must be truthful and comply with all Federal Trade Commission requirements, it’s okay for a Coca Cola® advertisement to use a Pepsi® product in a comparative advertisement.  The nominative fair use defense is, clearly applied when the defendant uses the plaintiff’s mark to refer to the plaintiff’s product, even though the defendant's ultimate goal is to describe his own product.  E.S.S. Entm't 2000 at 1029.

C.    First Amendment vs Trademark

The legal standards for determining trademark fair use may shift when we move from a descriptive or commercial use into a creative use.  In the United States, creative works are protected as free speech by the First Amendment.  Because of that protection for the whole work, even the title of the work, a balancing act must occur between the rights of the trademark owner and the First Amendment rights that arise in the creative work.  Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).  If the court determines there is a likelihood of consumer confusion, it will then balance the trademark rights against the freedom of expression rights.

The Rogers test arises from a question of whether or not a title to a film infringes upon the trademark and personality rights of a famous person while balancing First Amendment rights.

What is that standard when we are talking about expressive works? The test used by multiple circuits (originally in the 2nd Circuit, but later adopted by courts in the 7th, 9th and 11th Circuits) is the two-prong Rogers test:  1) whether the use of the third-party trademark has artistic relevance; and 2) if so, is it deliberately misleading as to the source or content of the work.  Rogers and the cases adopting its holding have consistently framed the applicable standard in terms of confusion as to the defendant's artistic work as a whole and not solely the alleged use of the defendant’s trademark.  Louis Vuitton Mallatier v. Warner Bros., 868 F. Supp. 2d 172, 179 (S.D.N.Y. 2012).  Expressive works include art work, motion pictures, songs and books. 

D.        Titles: 

The Rogers test arises from a question of whether or not a title to a film infringes upon the trademark and personality rights of a famous person while balancing First Amendment rights. In general, courts do not want to reach a Constitutional analysis if a decision can be reached by application of other laws.  That’s what happened in Eastland Music v. Lionsgate Entertainment, 707 F.3d 869 (7th Cir. 2013), when the court held there was no trademark infringement of rap artist’s PHIFTY 50 name by the film titled 50/50.  The district court dismissed the complaint under Fed.R.Civ.P. 12(b)(6), ruling the movie's title descriptive because the film concerns a 50 percent chance of the main character surviving cancer and the Court of Appeals affirmed. Eastland Music at 870.  “It is unnecessary to consider possible constitutional defenses to trademark enforcement . . . because this complaint fails at the threshold: it does not allege that the use of "50/50" as a title has caused any confusion about the film's source.” Id. at 871.

E.        Film:

Dark Night Rises

In the film “The Dark Knight Rises,” Catwoman sought to erase her criminal record from every computer database around the world.  To do it she had to get her paws on the fictional CLEAN SLATE software developed by the fictional company "Rykin Data Corporation."   Fortres Grand Corp., a very non-fictional company has a software product called the “Clean Slate” and a registered trademark for "[c]omputer software used to protect public access computers by scouring the computer drive back to its original configuration upon reboot."  Fortres Grand Corp. v. Warner Bros. Entertainment, Inc., No. 13-2337 (7th Cir. Aug. 14, 2014).

Fortres Grand noticed product sales were declining after the 2012 movie release and brought suit against Warner Bros. for trademark infringement. The District Court held for Warner Bros., finding there could not possibly be confusion as to the source of origin of the two products since Warner Bros. is in the business of making movies and Fortres Grand makes software.  The Seventh Circuit affirmed.

In this case, even though we are talking about an expressive and very creative work in the nature of the film, the Court of Appeals never mentions the Rogers test and makes its decision based on the traditional trademark infringement standard of likelihood of consumer confusion. We have to look at the District Court opinion to review the analysis under Rogers and the decision reached after reviewing the Rogers test. “In this case, there can be little doubt that Warner Bros, has satisfied both prongs of the Rogers test. The first prong — artistic relevance — establishes a purposely low threshold which is satisfied unless the use ‘has no artistic relevance to the underlying work whatsoever.’” Fortres Grand Corp. v. Warner Bros. Entertainment, 947 F. Supp. 2d 922, 932 (N.D. Ind. 2013).  Additionally, Warner Bros. clearly satisfied the second prong of the Rogers test — the film's use of "clean slate" is not "explicitly mislead[ing] as to the source or the content of the work." Id.

The District Court found there was no plausible claim for consumer confusion and Warner Bros.’ use of “Clean Slate” is protected by the First Amendment. The Court of Appeals affirmed without ever reaching the First Amendment question. Fortres Grand, No. 13-2337 (7th Cir. Aug. 14, 2014).

Hangover II

Another fun case involves the Louis Vuitton design trademarks and the movie HANGOVER II. Louis Vuitton Mallatier v. Warner Bros., 868 F. Supp. 2d 172, 179 (S.D.N.Y. 2012). One of the lead characters in the film travels with an ensemble of "fake" Louis Vuitton bags. To add insult to injury, the character even mispronounces the name of the brand in the film. Louis Vuitton sued. Interestingly enough, Louis Vuitton did not file suit claiming consumer confusion because Vuitton did not authorise the use fo the bags in the film. Rather, Louis Vuitton claims that Warner Bros. used a third-party's bag that allegedly infringes on the Louis Vuitton marks. Remember - it was a "fake" bag.

The District Court applied the Rogers Test finding 1) sufficient artistic relevance in using the Louis Vuitton mark in the film, and 2) using the "fake" bag was not intentionally misleading. The trademarks were not used in a way to "induce members of the public to believe [the film] was prepared or otherwise authorized" by Louis Vuitton.

Louis Vuitton was hung up on arguing that using the "fake" bag somehow created liability because consumers would believe the "fake" was the real thing. The court would not extend the law to include liability for using a "fake" trademark in the film.

F.         Songs:

Barbie Girl

The Ninth Circuit held that the use of the trademark BARBIE was permitted in a song and its title which parodied and made fun of the vacuous, party-girl image that has evolved from the BARBIE doll. Applying the Rogers test the court found that the use of the mark in the song title had artistic relevance to the content of the song.  Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), cert. denied, 537 U.S. 1171, 123 S. Ct. 993, 154 L. Ed. 2d 912 (2003). And, for all you Texas music fans out there, the result should be the same for the song “Barbie Doll” by Jack Ingram.

G.        Visual Arts:

Paintings and works of art clearly fall under First Amendment protection.  In balancing the rights for free expression and artistic relevance against any possible misleading as to the source of a particular painting, the Eleventh Circuit held the First Amendment trumped trademark rights in original paintings of the University of Alabama football team.  University of Ala. Bd. of Trustees v. New Life Art, 683 F. 3d 1266 (11th Cir. 2012).

H.        Video Games:

As technology improves and video games become more realistic, the issue of third-party trademark use in the games industry is becoming increasingly relevant. Already, there have been a few important cases which bring the tests and case law from other media into video game industry trademark disputes.

The Supreme Court in Brown v. Entertainment Merchants Ass'n, 131 S.Ct. 2729 (2011), stated, “[l]ike the protected books, plays, and movies that preceded them, video games communicate ideas—and even social messages—through many familiar literary devices [such as characters, dialogue, plot and music] and through features distinctive to the medium [such as the player's interaction with the virtual world]. That suffices to confer First Amendment protection.”

Grand Theft Auto

In E.S.S. Entm’t 2000 v. Rock Star Videos, 547 F.3d 1095, 1097 (9th Cir. 2008), Rock Star created the video game Grand Theft Auto: San Andreas. In the game, which itself is set in a parody of the Los Angeles area, there is a strip club called the “Pig Pen Gentlemen’s Club” in an area that resembles East Los Angeles.  E.S.S. operates a real-world strip club called the “Play Pen.”  The styling of the building and logo is very similar for both, and the facts indicate that Rock Star’s artists traveled to the area and photographed locations for reference.

Grand Theft Auto Pay Pen Trademark fair use

The creation of the “Los Angeles” atmosphere in the Grand Theft Auto game met the Court’s “minimum threshold” standard for artistic relevance. The Court also found that a consumer would probably not believe that the owners of the Play Pen would have created this video game. Therefore, they found no misleading behavior on Rock Star’s part.

Dillinger

Dillinger, LLC v. v. Electronic Arts Inc., 795 F. Supp. 2d 829 (S.D. Ind. 2011), is a lawsuit brought by the heirs of famed criminal John Dillinger for infringement by Electronic Arts in their video games based on the “Godfather” movies. In the games, “Dillinger” is used to refer to the firearms (so-called Tommy guns) used by the player.

The Court found, in applying the Rogers test, there was artistic relevance in referring to the gun as a Dillinger, as that was the real person’s firearm of choice. No evidence was presented of any misleading actions on the part of Electronic Arts, either, so both prongs of the test were met and Electronic Arts was granted summary judgment.

Battlefield 3

Both statutory law and common law allow for fair use of trademarks in commercial works and expressive works.
— Tamera H. Bennett

In  Electronic Arts, Inc. v. Textron, Inc., No. C 12-0018 (N.D. Cal. July 25, 2012), Electronic Arts sought a declaratory judgment from the district court regarding their use of Textron’s protected trade dress in various military hardware. Electronic Arts argued that their video game, Battlefield 3, was an expressive work protected by the First Amendment. Given that, they were entitled to the same fair use protections entitled to other media forms.  Initially there was a license between Electronic Arts and Bell for use of the Bell helicopters in the video game. Electronic Arts announcedit would no longer pay the license fees and sought a declaratory judgment of non-infringement. Textron responded by filing various trademark infringement counterclaims.

The District Court, however, distinguished this case from the earlier E.S.S. case in the same circuit. Where the Pig Pen strip club was merely part of the background in the Grand Theft Auto game, the helicopters in Battlefield 3 were more prominent in both the game and its advertisements. In rejecting the motion to dismiss, the District Court held that it was plausible that a consumer could believe that Textron had supported the game or authorized the use of its marks. Even a disclaimer, the Court said, was not enough to overcome this possibility. The two companies later settled the dispute on confidential terms.

Conclusion:

Using a third-party trademark in your next film, TV show, song or video game my very well be permissible without securing permission. Both statutory law and common law allow for fair use of trademarks in commercial works and expressive works. Keep in mind, even in an expressive work, the courts will not always reach a First Amendment analysis if a decision can be reached under a traditional likelihood of consumer confusion analysis.

Links to cases cited in this article and other news reports of interest are located in a collection on Google Plus.

The article was originally published as part of the course materials for the TexasBarCLE Entertainment Law Institute 2014.

Sued For Trademark Infringement - Now What?

The U.S. Patent and Trademark Office has a couple of great resources to guide you in your next steps after being sued for trademark infringement or receiving a cease and desist letter.

The USPTO "I've Received a (Cease and Desist) Letter" flyer answers:

  • What is a trademark infringement cease and desist letter?
  • What are my options if I receive a trademark infringement cease and desist letter?
  • Does receiving a cease and desist letter from the trademark owner mean that I'm being sued or will be sued?
  • What if the trademark is not federally registered, or the registration expired or was cancelled?
  • How can I use USPTO records to find out more information about the claimed trademark and who owns it?
  • How can I challenge a trademark registration or application?
  • Do I need an attorney to respond to a cease and desist letter?
While you are not required to have an attorney to respond to a cease and desist letter, an attorney can help you understand the scope of your trademarks rights and the strengths and weaknesses of the allegations against you.
— U.S. Patent & Trademark Office

The USPTO "I've Been Sued" flyer answers:

  • How does a trademark infringement lawsuit begin?
  • What are my options to respond to the trademark lawsuit?
  • How do I find a trademark lawyer?
  • How do I know whether I'm actually infringing a trademark?
  • How can I use USPTO records to find out more information about the claimed trademark and who owns it?
  • How can I challenge a trademark registration or application?

Contact Lewisville, Texas Trademark lawyer Tamera Bennett with any questions.