Is Your Logo Borrowed from Hollywood?

Is Your Logo Borrowed from Hollywood?

Is Your Logo Borrowed From Hollywood?

Companies want to stand out. They want to create a positive impression. So taking a logo from a television show makes sense, right? Wrong. You’re asking for trouble even if you choose a show that is off the air. The producers of the show retain several levels of rights and can easily make you stop using names, logos or other items. The producers retain rights under both trademark and copyright. Not only can they make you stop using the logo, but they can also take your profits from you and make you pay their attorneys’ fees.

Logo

Are You Safe From Infringement?

Under trademark law, the main question is whether the public would be confused and think there is a connection between your company and the show. This is also known as likelihood of confusion. Is it likely that your company would be confused with the show you used as “inspiration”? If yes, you’re in trouble. Under copyright law, the question is whether there is a substantial similarity between your logo and their logo. I like to think of this process as more art than science. And no, you can’t argue Fair Use or Public Domain.

“But I Didn’t Know”

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!

Federal Trademark Registration For TACO TUESDAY

Federal Trademark Registration For TACO TUESDAY

Taco Bell v. Taco John: A Federal Trademark Registration Battle

In May Taco Bell moved to cancel Taco John’s federal trademark registration of TACO TUESDAY. This received a fair amount of press for several reasons. First, Taco Bell ran a national campaign starring Lebron James stating that everyone should be able to use “Taco Tuesday.” Second, Taco Bell’s counsel wrote a fairly informal Petition to the Trademark Trial and Appeal Board which in essence said that Taco John’s ownership of Taco Tuesday was “not cool.”

Taco Bell started the legal portion of this matter by filing a Petition to Cancel that was fairly artistic. To wit:
“People like tacos on Tuesdays. They just do. It’s even fun to say: “Taco Tuesday.” Tacos have the unique ability to bring people together and bring joy to their lives on an otherwise mediocre day of the week. But since 1989, entities associated with Registrant have owned a federal trademark registration for “Taco Tuesday.” Not cool.”

Federal Trademark Registration

Lets Taco Bout It

Taco John filed its response in June and will not be outdone. I was impressed with Taco John’s response. This much smaller chain matched wits with Taco Bell, writing its own clever Answer to Taco Bell’s Petition.Their response:
“[Taco John] admits that since 1989, entities associated with it have owned a federal trademark registration for the mark TACO TUESDAY, that people like tacos and that tacos can bring people together. [Taco John] denies that there is anything “not cool” about independently creating a trademark over forty years ago and obtaining a registration for that trademark with the United States Patent and Trademark office. The remaining allegations of paragraph A are statements of opinion to which no response is required, including that Tuesday is a mediocre day of the week.”

Federal Trademark Registration

I think the most important words written in this matter were words by Taco John later in their Answer:
“…whether a registered trademark is “fun to say” does not constitute a legal basis to cancel a trademark that has been registered with the USPTO for thirty-four years and was first used by [Taco John] and its licensees as early as 1979.” Taco John also raises the affirmative defense of “unclean hands” by Taco Bell. This defense is often a throw-away, but an interesting tactic in this case.

TACO TUESDAY For All

Unfortunately for Taco John, this battle ended much sooner than expected. On July 18th, 2023 Taco John’s International, Inc. surrendered its federal trademark registration on TACO TUESDAY. Ultimately, Taco John’s saw the writing on the wall. They saw that they would likely lose this battle, and stopped the fight before they spent considerable sums with white shoe lawyers. Taco Bell is now declaring that they’ve freed Taco Tuesday for everyone to use.

Building Your Brand

Building Your Brand

Building Your Brand

Brand

I recently gave a speech to a group of startup business owners. This group of entrepreneurs hosts a series of speeches, with a different business topic covered each month. My topic was Building Your Brand. Those who know me well know that this is not a core competency of mine– building a brand is better left to marketers. However, I am well versed in building a company’s legal rights in its brands.

As I explained to the group, working with brands requires a great deal of strategy. The first step with almost any strategic plan is to know your objectives. In the case of brands, what unique symbols/designs/words do you want to use to draw the attention of your customers for the next several

years and decades? Next, you need to determine how you plan to get there. This requires an understanding of the environment you plan to operate in and knowing your strengths and weaknesses. Finally, you should form a plan and execute it. 

When it comes to building the strength of a brand, steps two and three are where I can add the most value. While I can review a business’s plan to determine the brands that might be most important to the business, this information is often provided to me. Once this is determined I can perform searches to provide a risk assessment and look for paths forward to enhance your brand rights. I can then begin the work of actually building your rights in your brands.

Who Is Your Audience?

One example I used during my speech was McDonald’s. There are literally thousands of ways to run a hamburger restaurant. McDonald’s has a few specific target audiences and makes it easy for those consumers to find them. One group that McDonald’s caters to is travelers. You can see this both by the way they operate, and by how they market. From an operations perspective they frequently build restaurants near highway exits, have fast service, provide disposable containers and have good bathrooms.

Brand

From a marketing perspective, they create a funnel of brands to draw customers to them. They place their golden arches up high so you know which exit to use and which side of the exit the restaurant is on. Once you’re off the exit, the red and yellow colors of the roadside sign help you spot the restaurant, and as you drive closer you can read “McDonald’s.” Pulling into the parking lot you’ll notice the expected shape of the restaurant. Inside the store the layout will seem familiar, as will the names of menu items such as Big Mac or McNuggets. These symbols serve a specific marketing purpose and are very valuable to McDonald’s. They became valuable through McDonald’s adoption and consistent use of these unique items.

Building Your Brand

Questions To Ask When Building Your Brand

Look to your future. Who is your target audience? What are you doing to market to them? What unique symbols are you using to make your business recognizable to your preferred consumer? You should begin consistently using these items right now to create the traction in the marketplace you want to have. When you’ve determined your preferred customer, you know where to find them and have plans to attract their attention. You have even found convenient ways for them to conduct business with you.

This is where branding and marketing become very important. As a very quick explanation, branding helps your customers identify you whereas marketing tells the story of your company. Looking at branding, you want to make sure you use unique items to identify your company. This keeps customers from confusing you with a competitor. You also want to use your brands consistently. This reminds customers of your business.

Branding is essentially an incredible shortcut. It allows customers to identify companies quickly, which makes the markets very efficient. The law recognizes this benefit and protects a company’s exclusive right to use their brand. This exclusive right of course means that competitors cannot use similar brands. This also means that there is risk when you adopt a new brand—the risk that your new brand may be too similar to an existing brand.

I help companies assess this risk. I can conduct a search to review the rights that other companies have, and to see how likely it is that your brand would cause confusion in the market. The most popular of these searches only costs $400.

Rights of Publicity

Rights of Publicity

Rights of Publicity

One of the more amorphous intellectual property rights is the collection of rights referred to as “Rights of Publicity.” In a nutshell, these are the rights that an individual has to use his or her image for commercial purposes. From the perspective of a company, you want to ensure that it has acquired the appropriate rights/ licenses it needs to promote its products or services. While this has always been important, the rise of social media influencers has made it even more important.

Publicity

Be Thorough With Influencer Contracts

Contracts with influencers, celebrities, and similar endorsers can be very involved. We will leave topics like FTC regulations for another post. The takeaway is that the contract should spell out the company’s right to use the endorser in promotional material.

Using an influencer can be a great way to jumpstart sales and/or enter into a new market segment. It also can be expensive. Don’t ignore the important task of determining exactly what you bought when entering these contracts.

What Are Trade Secrets?

What Are Trade Secrets?

What Are Trade Secrets?

A Trade Secret is information driving independent economic value because it is not generally known or readily ascertainable. There are a set of laws helping companies safeguard valuable practices, processes or information (confidential information) used by a business and not known outside of the company.

As the name implies, the company must take reasonable steps to prevent others from knowing this valuable information. This includes only giving access to people who need to know the information. Simple steps such as passwords, locks, etc. should be put in place to keep others away from this information. More involved steps may be warranted in certain circumstances.

Trade Secrets

The US Protects Trade Secrets

The United States has a Uniform Trade Secrets Act which serves as the model act for most states’ laws regarding this subject. Additionally, Congress passed the Defend Trade Secrets Act in 2016. Courts can protect a trade secret by ordering that the misappropriation stop, that the secret be protected from public exposure, and the seizure of the misappropriated trade secret (in extraordinary circumstances). Courts can also award damages, court costs, reasonable attorneys’ fees and a permanent injunction.

Unlike traditional types of intellectual property, there is no way to register your rights in a trade secret. (Remember, it needs to stay a secret!) Taking stock of your confidential information is the first step in safeguarding it. Next, you must ensure you are taking steps to keep the information secure. Finally, you should monitor to make sure you are not finding instances of companies using your confidential information.