Is Your Trademark Registered Correctly?

by Richard Rimer | Aug 30, 2023 | Education

Is Your Trademark Registered Correctly?

It doesn’t make sense, but…

I hear it way too often. “I helped that company get their trademark registered,” they say. “My dad was a lawyer and I saw him do it a hundred times.” This leaves me with so many questions. First, is this person also a lawyer? If not, they just admitted to the unauthorized practice of law. Second, this area of law changes frequently, so unless you’ve somehow kept up through the years, this person likely did not understand all relevant nuances. Third, getting a registration is very different from getting a registration that actually helps and adds value to the company. Is your trademark registered correctly? I often wonder if this person’s mom was an optometrist, would they help correct someone’s vision? Even if they were a doctor too, only a trained optometrist can really effectively perform this task. So, does it really run in the family?

There are several different ways

to protect your brand through trademark registration, the most important being gaining a Federal Trademark registration for your brand name. The second being the registration of your brand’s logo. Would someone necessarily know the difference if they don’t practice trademark law? Not only should you register your brand federally, but you should also register it with your state. These are all important nuances. You may have a tagline that you use for your business. For example, my firm Initiating Protection’s tagline is “Where Your Mark Gets Its Start”. In order to prevent other businesses from using the same tagline to promote themselves, it is important to register it as well.

“But I Didn’t Know”

This phrase is the reason I started my firm. I heard it so many times from small companies when I worked for big firms and represented the large companies. These small companies were taking chances by operating in unknown conditions. This risk was not necessary, and I want to show them the way to certainty. My mission is to inform, educate and represent small and mid-sized companies in the world of intellectual property, and specifically brand rights. My purpose is to remove obstacles and reduce the friction that may prevent you from conducting business as you wish. Informing and educating are so important, because IGNORANCE IS NOT AN EXCUSE! If you want to be sure that your trademark is registered correctly, don’t hesitate to reach out.

What Makes Your Brand Unique?

by Richard Rimer | Aug 28, 2023 | Brand Protection 101

What Makes Your Brand Unique?

I think brands are very cool. Think of the power in a brand! You can see it for only a split second and instantly recognize it; Driving down the highway; Scrolling through the internet; A brand will break through the noise. Did you know that the main purpose of a brand is consumer protection? Today we think of brands as being attention-grabbing, but real purpose is to let consumers know who is providing the product or service. This source identifying feature used to be fairly plain, but then marketers got involved. The market is more saturated than ever before, which is why it’s so important to make your brand unique.

In many cases, brands are created and promoted by marketers. These are two very different skill sets, but both are critical to brands stopping the scroll. First, creating the brand requires that you find something eye-catching that conveys the sentiment you want your prospective buyers to feel. Next, you need to put that brand in the right context. Your prospective buyers should know what the brand stands for. From a legal perspective, brands should be unique.

The Spectrum of Distinctiveness – Is Your Brand Unique?

To gain legal rights, a brand must be distinct. In other words, how can a brand let buyers know who made the product or performed the service? There are two ways a brand can be distinct; it is created to be distinct, or it can become distinct over time. A brand won’t gain legal rights if their brand is the common word or symbol for something, or if it conveys information in a simple way. For example, you could never gain exclusive rights in the word “Cookie” for cookies. Similarly, you cannot gain rights in the color red for an item that is cherry flavored.

At first, a brand that describes its goods or services will not be given full legal rights, but it can eventually acquire these rights. If I wanted to use the brand “Chewy” for cookies, I would need to accept that other cookie companies can use this word to describe their products. Hypothetically, over time, less and less companies describe their cookie products as “Chewy”. Eventually I am the only person to call my cookie “Chewy”. Now the public may start to associate this word with my company. This is the case for many well-known companies. Another example is The HoneyBaked Ham Co. & Cafe. They may not have made their brand unique, but they gained legal rights to their name over time.

There is more deference given to words that exist only as a brand (think: Lexus, Pepsi & Kodak). Words that are unrelated to their good or service also get strong rights (e.g., Apple, Tide & Carnation). Want protection? Be distinct!

Excuse Me, I Was Here First

The law protects brands that help consumers know who is providing a good or offering a service. As the marketplace becomes more saturated, brands need to stand apart from others in the marketplace. A brand cannot gain legal rights if it would cause confusion with another brand. When one brand causes confusion with another, the older brand can sue the younger brand. In court, they would test the likelihood of confusion. They have to ask, would the average consumer be likely to think that both brands in question are from the same company? If yes, then the newer brand is not distinct enough.

If you’re a fan of 80s comedies, you likely remember the movie Coming to America. In the movie, one character owns a hamburger joint called McDowell’s. He keeps complaining that McDonald’s is trying to shut him down. He explains, “I’m McDowell’s. They got the Golden Arches, mine is the Golden Arcs. They got the Big Mac, I got the Big Mick. We both got two all-beef patties, special sauce, lettuce, cheese, pickles and onions. But their buns have sesame seeds.” I’m not sure that McDowell’s would win its suit against McDonalds, but at least you get the picture.

The Nice Classification System: Avoid Likelihood of Confusion

by Richard Rimer | Aug 25, 2023 | Infringement

The Nice Classification System: Avoid Likelihood of Confusion

Almost every legal battle between brands relates to likelihood of confusion. That is, if someone starts selling widgets under brand ABCDEFG, will the public likely believe that these widgets come from the same source as the gizmos sold under the ABCEFG brand? If so, the second brand is said to infringe on the first brand. This test looks at many variables, but none are more important than-

(1) how similar are the brands, and

(2) how related are the goods/services.

This test is more art than science. Every trademark office uses the same system to classify every product or service sold.

The Nice Classification

The system is called The Nice Classification (NCL) and it is an international classification of goods and services. The NCL takes every good or service sold and places it into one of forty-five classes. The NCL is not as black and white as it may seem. There are two common misconceptions when it comes to classification. Many people assume that if two goods/services fall in the same class, they must be related. That is not always true. Another assumption is that if two goods/services fall in different classes, they are not related; Also not true! This is why it’s important to have legal counsel on your side. If you are not sure if your brand has a likelihood of confusion with another, don’t hesitate to reach out.

Avoid The Risk of Likelihood of Confusion

The only way to determine the relatedness of items is to consider a number of factors. These range from whether the items are used together to whether it is common for the same company to sell both items. The phrase “but I didn’t know” is the reason I started my firm. I heard this phrase so many times from small companies when I worked for big firms and represented the large companies. These small companies were taking chances by operating in unknown conditions. This risk was not necessary, and I want to show them the way to certainty.

My mission is to inform, educate and represent small and mid-sized companies in the world of intellectual property, and specifically brand rights. My purpose is to remove obstacles and reduce the friction that may prevent you from conducting business as you wish. Informing and educating are so important, because IGNORANCE IS NOT AN EXCUSE!

Copyright Law: Taylor Swift’s Legal Issue

by Richard Rimer | Aug 23, 2023 | Education, Other

Copyright Law: Taylor Swift's Legal Issue

Taylor Swift is a cultural phenomenon. She is a singer and songwriter who released her first single in 2006 when she was 16 and has remained in the spotlight since that time. Taylor is currently on a tour that has been compared to the Super Bowl in terms of economic impact. Taylor Swift has become a household name; she is a mega-star! But along with major success came battles with copyright law.

Her first six albums were released under the record label Big Machine. Like most standard contracts in the music industry, this contract gave control of the actual recording (the “master” recording) to the record label.

Once Taylor became TAYLOR, she wanted control of her master recordings for the first six albums. She attempted to negotiate a new agreement with Big Machine, but they couldn’t reach a deal. Taylor left Big Machine and signed a deal with a different label; one that would give her control of all future master recordings. Big Machine retained control of the older master recordings. The masters were then acquired by Scooter Braun, one of Taylor’s nemeses.

Copyright Law is Wonky!

Intellectual Property law is peculiar. Copyright law is wonky. Music rights within copyright law is down-right bizarre. Copyright generally covers works of art, including music. The person that makes a permanent recording of the art is the author, and the author is the original owner. Within the world of music, there are two sets of rights: the rights in the composition and the rights in the master recording itself. The owner of each piece has a different type of control. These rules can be changed by contract. Confusing, right?

These rules can create a variety of outcomes. A standard contract usually assigns the rights in the recording to the record company. Thus, a musician who does not compose their own music may not own any copyright in their music. Fortunately for Taylor, she did write her own music, so she always owned the composition rights. Unfortunately, she does not own the master recording, Big Machine does.

To Further Clarify

The owner of the master recording usually has the rights necessary to publicize the recording. This includes the rights in the sound recording, plus related videos and album art. The owner of the master recording also receives the royalties every time the song plays.

The owner of the composition owns the “sync rights.” This allows the song to be used in advertisements, movies, and other non-traditional uses of the song. While these rights are very important in allowing music to become more widely distributed, only the owner of the master recording receives royalties.

For Taylor, this means that she is not making a dime from every time her music is played on a streaming app or radio station, etc.. However, she can prevent or allow her songs from being used in other forms of media like movies and television. Another relevant legal aspect in this case is that Taylor has the right to re-record her music five years after the original was recorded. This time period lapsed for all six albums, and Taylor is realizing her rights under this provision.

Look What You Made Me Do

Taylor’s original contract gives her record label ownership of the master recordings. This same agreement also allows Taylor the right to re-record this music after five years. While re-recording over 80 songs is a huge undertaking, Taylor is in the process of doing so, and re-releasing her original six albums one at a time. For example, she released “Speak Now (Taylor’s Version)” in July 2023, and has just announced the release of “1989 (Taylor’s Version).”

There are now two master recordings for all of these songs. Scooter Braun owns the old versions, and Taylor owns the new versions. Now, if Taylor wants to use the song “Bad Blood” in a movie about how much she hates Scooter Braun, she can use the new version and make sure he doesn’t get any royalties from it. Thankfully due to Taylor’s supportive fan base, her new recordings are receiving the most airplay, giving her (and not Scooter) the royalties.

To her credit, Taylor doesn’t want to be the only one to benefit from this experience. She is also calling attention to the standards in the industry and trying to protect future artists from falling prey to these rules. Maybe it’s time for these rules to change? After all, the industry itself has certainly changed and artists are not as reliant on the promotional arm of record companies as they once were.

Cheer on Your Team Without Copyright Infringement!

by Richard Rimer | Aug 21, 2023 | US Registration

Football Season is Around the Corner!

Soon you’ll see people wearing shirts, hats and many other items bearing the logo of a favorite team. Here in the South, there’s a good chance that team is a college team (Go Dawgs!). During my career I’ve had many questions about what can and cannot be made without a license to avoid copyright infringement. The people asking are not large companies, they tend to be individuals with the hope of creating small items either for personal use or to sell. For example: an individual making themed hair bows or hats for a craft show, or maybe someone creating specifically themed bumper stickers for their cars.

Cheering without Risk of Copyright Infringement

Things get more complicated when you involve college sports in the mix. Like with any company, you cannot use the brand names, logos, taglines and other source-identifying items belonging to a college. This would be considered copyright infringement. However, there is some leeway with the use of colors. The generally accepted rule is that you cannot use the colors of a school in addition to something that identifies the school.

For example, I could not make shirts that are red and black and say “Cheering with my 92,746 best friends,” because that clearly refers to the University of Georgia and their football stadium’s seating capacity. But, I can make a simple red and black t-shirt to wear to the game. It just can’t have any other identifying information in order to avoid infringement. If you have questions or concerns about your personally crafted items, the best thing to do is speak with Legal Counsel. Copyright infringement is a serious matter and can be the demise of your small business, even when the product you are creating seems innocent enough. Feel free to contact me if you want information about how you can cheer without fear of copyright infringement. We at Initiating Protection hope your team does well this year!

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