Infringement of Media: Don’t Mimic Hollywood

by Richard Rimer | Aug 7, 2023 | Office Actions, Cease & Desist, Infringement, Education

Don't Mimic Hollywood: Infringement of Media

I recently posted about the dangers of borrowing your branding from Hollywood. In summation, taking a logo from a television show does not make sense for a few reasons. “The producers of the show retain several levels of rights in the show and can easily make you stop using names, logos or other items. [They] can not only make you stop using the logo, but they can also take your profits from you and make you pay their attorneys’ fees.” There are many ways you could infringe on someone else’s intellectual property. Infringment of media is just one of them.

I saw a story in which an Atlanta area lawyer ran directly into this issue. She received a cease and desist letter warning her to stop using the name and primary color from a movie released in 2001. The movie is Legally Blonde. That’s right! An attorney ran into this legal branding problem. This young, blonde female lawyer (those are relevant legal facts) uses the Instagram handle ‘LegallyBlondeAtlanta’ and has billboards on pink backgrounds which proclaim her as “The Legally Blonde Atlanta.” This lawyer told a local reporter that Legally Blonde is her all-time favorite and it inspired her to become a lawyer. She said “I feel very targeted. I’m not trying to infringe on anyone. I’m really just trying to help people. It took me three years to build to where I am, working really hard.”

No One is Immune to Infringement

Infringement of media is no joke. Her intentions are irrelevant, though she is obviously familiar with it. Many small businesses have met their demise for infringing on another brand, whether or not they only had good intentions. Accordingly, the company threatening action against this ATL lawyer claims that people will assume that there is some connection, affiliation or endorsement between the movie and this lawyer. They’re not wrong.

Some might ask why they are just now coming after this lawyer. The answer is simple: they just now discovered her. Her promotion of her brand has just now gotten to the point where they would see her. Therefore, they acted as quickly as they could. I see a rebrand in this lawyer’s future. Surprisingly, one of her recent Instagram posts shows her with a “Barbie” vibe. She hasn’t asked, but I would suggest she find something else.

Lawyer Barbie says “Don’t Mess with Pink”

by Richard Rimer | Aug 4, 2023 | Brand Protection 101, Office Actions, Cease & Desist, Infringement, Education

Lawyer Barbie Says "Don't Mess With Pink!"

Newsflash! Barbie wears pink. She is pink personified! I doubt this is a surprise to anyone who has seen the movie this summer. Or anyone who has seen the iconic doll since 1959 when it was released. Or anyone with 4 daughters, like myself. You might assume that Mattel, Inc. has locked down registration rights in the color pink, but you would be wrong. That doesn’t mean that Mattel does not have the right to prevent competitors from using pink. They mean business when it comes to protecting their brand.

Brand protection (Trademark) rights start when you use a brand. These rights are maintained as long as you continue using the brand and keep others from doing the same. You can enhance your rights by getting a registration, but it is not required. (NB: it is common sense to get a registration for important brands when possible.)

Barbie Isn’t Quite

Tickled Pink

As mentioned, Barbie has been adorned in pink for decades. Marketer Barbie ensures that pink is more than a color she wears, it’s the color of the packaging all around her, e,g. boxes, cars, dream houses, etc. This long-standing and consistent use has allowed the public to associate this color with Mattel. (If you want proof, look at the large billboards that are entirely pink except for the film’s release date of “July 21” written in white.)

Additionally, Mattel hired lawyer Barbie many times to enforce these rights. She has sued the rock band that released “Barbie World” and the company that offered “Barbie Q” snack foods. Pink is a very used, very valuable and very policed brand. Any competitor trying to use pink, and anyone who appears to be using her goodwill will be shut down. Beware the Pink Mafia!

Indiana Jones and The Missing Patch

by Richard Rimer | Aug 2, 2023 | Brand Protection 101, Education, Other

The Relationship Between Branded Merchandise and Film

I often get questions about whether you can place branded merchandise in films. It seems that many films and television shows avoid using logos. Typically, the costumes department is in charge of ensuring their extras do not wear t-shirts with the Nike swoosh, for example. Even so, the answer is yes they can, provided…

Frost River, an American outdoor goods company, makes a bag called the “Geologist Pack”. In the latest movie, Indiana Jones carries the pack. On screen, the oval patch that bears Frost River’s trademark and the red taffeta were removed.

Consequently, this eliminates the brand from the merchandise, which is meant to demonstrate that the backpack is made by Frost River. Commonly the costumes and props in movies and television appear “brandless”. This is ordinarily not a major problem.

Branded Merchandise Infringement

What IS a problem is that Lucasfilm partnered with an outdoor goods competitor of Frost River for a commercial. You may be thinking, well that’s a little unfortunate, but what’s the big deal? Well, in the 60-second television commercial produced by Lucasfilm and Filson (the opposing outdoor goods company), Indiana Jones is wearing the Frost River backpack. Oops! Even worse, Filson put the commercial on its website as promotional content.

Frost River obviously issed their complaint. “A consumer visiting Filson’s website is led to believe, by implication, that the bags featured in the Indiana Jones 5 film were manufactured by Filson and are genuine Filson products.” Without a doubt, this is an example of reverse passing off. It is considered a false designation of origin under the Lanham Act. Frost River is seeking actual damages as well as punitive and exemplary damages.

I predict this matter will settle before a court gets to hear it. Frost River may feel like it got its moment in the sun. Maybe Filson will need to pay the legal bill to make Frost River feel warm again.

Sound In Trademark: Can You Name That Tune?

by Richard Rimer | Jul 31, 2023 | US Registration, Education, Other

Sound in Trademark: Can You Name That Tune?

The MGM lion’s roar; the NBCUniversal tune; the Harlem Globetrotters’ “Sweet Georgia Brown.” Sounds can often identify brands. While we tend to think of brands as something visual like a word, design, color scheme, etc., anything that identifies the source of a good or service can be a brand (or trademark as lawyers like to call them). Many believe sound to be a nontraditional trademark.

In the US we must demonstrate that we are using a brand to get a registration. The USPTO (aka the Trademark office) has tight rules for what

is acceptable as an example of use. When it comes to services, you can simply show that the brand appears in advertisements. For goods, you need to show the brand as it appears on or in connection with the good as it travels through commerce. However, trademarking for sound works a little differently.

Duracell’s Sound Check

The Duracell Company just won a battle to join this group. Duracell convinced the Trademark Trial and Appeal Board that its three-note “slamtone” was eligible for registration. Oddly, the hold-up wasn’t that the slamtone was capable of identifying the source of Duracell’s batteries. The obstruction was where and how Duracell used its slamtone.

The Trademark Office came to the conclusion that the examples of the slamtone are “mere advertising” and not “displays associated with” Duracell’s batteries. Basically, Duracell has some of the ads to play in the stores where Duracell batteries are sold as a form of “audio messaging” (e.g., over the store speakers at CVS). The issue is whether these in-store audio messaging are “directly associated with” the batteries being sold.

In the end, the Trademark Trial and Appeal Board overturned the Trademark Office’s refusal to register the slamtone. Undoubtedly this is not the end of the road, as Duracell must now face third party opposition, but the biggest hurdle is clear.

Small Businesses – Are You Using Your Artwork As Your Logo?

by Richard Rimer | Jul 28, 2023 | Brand Protection 101, Infringement, Education, Other

Small Businesses Beware of This Common Budget Tactic

Doing things on the cheap is a way of life for many small businesses. Sometimes being penny-wise is pound-foolish. My marketing friends could tell you all the many reasons an investment in them to create a logo is money well spent. Additionally, there are legal reasons not to take your drawing and use it as your logo. While you clearly own the image you drew from your imagination, that does NOT give you the right to use the image as a brand. They’re two different things.

Under trademark law, the main question is whether your use of an image could confuse the public into believing there is a connection between your business and another. This is called likelihood of confusion.

“But I Didn’t Know”

Your ownership of the drawing is irrelevant. The phrase “but I didn’t know” is the reason I started my firm. I heard this phrase so many times from small businesses when I 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 businesses 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!

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