Friday, September 29, 2006

Copyright Registration: Performing Arts Works

First, let's pinpoint what falls into the performing arts category. Here's the list of examples from the US Copyright Office:

"Performing arts works are intended to be 'performed' directly before an audience or indirectly 'by means of any device or process.'

Included are (1) musical works, including any accompanying words;

(2) dramatic works, such as scripts, including any accompanying music;

(3) pantomimes and choreographic works; and

(4) motion pictures and other audiovisual works."

Here are some books about copyrights:

The Copyright Handbook

How to Register Your Own Copyright

Now to file an application:

The application is fairly simple & the cost is $45 per application.

Despite what others state, a "poor man's" copyright is NOT the same as registering it. Here's what the US Copyright Office has to say:

"The practice of sending a copy of your own work to yourself is sometimes called a 'poor man’s copyright.' There is no provision in the copyright law regarding any such type of protection, and it is not a substitute for registration."

Lastly, here are two great resources:

NOLO's Copyright Resource Center

NOLO's Creative Arts & Music Resource Center

Thursday, September 28, 2006

The Web of Trademark Law is About to get Bigger

The Federal Trademark Dilution Act of 1996 is about to expand in scope. The bill is simply awaiting the President's signature in order to become law. The new Trademark Dilution Revision Act of 2006 basically expands the scope of dilution to include blurring or tarnishment.

Here's what the government says about both:

* "Defines 'dilution by blurring' as an association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark. Allows the court to consider all relevant factors when determining whether a mark or trade name is likely to cause dilution by blurring, including:

(1) the degree of similarity; (2) the degree of inherent or acquired distinctiveness of the famous mark; (3) the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; (4) the degree of recognition of the famous mark; (5) whether the user of the mark or trade name intended to create an association with the famous mark; and (6) any actual association between the mark or trade name and the famous mark.

* Defines 'dilution by tarnishment' as an association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark." You can read the entire summary here.

So what does this mean for companies that sell items like this or this or even this. Warning, some of these are bound to offend. Once this becomes law, are we going to see a crackdown on products like this? How much will Parody as Fair Use protect companies such as these?

Wednesday, September 27, 2006

The Pitfalls of Relying on Free Name Research

You found the perfect name for your business and are ready to make your place in the business world. You know you should check to make sure that no one else has rights to your name but where to start?

Doing a search of the web brings up many, many services offering to search your name for free or for a minimal cost. Before you jump on board, make yourself aware of the following pitfalls:
  • Free research will never give you an accurate glimpse of what's out there in terms of names of products or services. If it's free, by all means, take advantage of it; however, please make yourself aware of any "hidden" costs and, most importantly, that you will be missing large chunks of information that are necessary to any comprehensive name search.

  • Comprehensive searches always cost more than preliminary searches because of the depth and breadth of the thousands of databases that must be searched, at a cost of $1 to $5 per minute wholesale. So, if a search sounds too good to be true it's because it is!

  • Preliminary searches are just that - a cursory look as to whether a trade name is used or not. This type of low price or free search is often never offered with analysis. Analysis is a key component of name research. It's very easy for people to under-react or overreact to research.

  • If the research appears to be clear, you still need a comprehensive search because most names are affected by similarities in sound, appearance and meaning, which do not often appear until a comprehensive search is conducted.

Take advantage of free resources just don't ever rely on them as comprehensive!

Tuesday, September 26, 2006

Podcast - 204,000,000 & counting


In a somewhat surprising move, it was announced this week that Apple wants to claim rights to the word podcast. A cease & desist letter has already been sent to Texas based Podcast Ready.

Those digits in my headline are how many hits I got for the word podcast when I did a search on Google this morning. It seems to me that trying to prove a point of origin and/or a right of ownership is going to be as close to impossible as impossible can get.

So what do we think? Is this a case of a behemoth company run amok? Or is this simply what Apple has to do - police & protect their trademark?

The online community definitely has an opinion.

Monday, September 25, 2006

A company in Santa Cruz may be Riding a Cruncher

There's been a follow up to the topic I wrote about earlier last month: Going Surfing! Huntington Beach IS Surf City USA ®.

Noland's on the Wharf received a cease & desist letter from the Huntington Beach Conference and Visitors Bureau.

Check out an article from the Santa Cruz Sentinel. The only article I could find in relation to a Huntington Beach paper was almost a carbon copy of the Santa Cruz one; check it out here.

Friday, September 22, 2006

Oh Trademark! My Trademark...your fearful trip is done!

A radio station operating from Lincoln, NE and owned by Clear Channel Communications ® has stopped using the pronoun MY because someone already owns that mark; read about it here.


photo: © martin@party-mania.nl

Doing a quick little search at the USPTO popped up a registered trademark for MY for radio broadcasting services:

Registration Number: 1535807


Mark (words only): MY


Registration Date: 1989-04-18


International Class: 041
Class Status: Active

RADIO BROADCASTING SERVICES

Basis: 1(a)

First Use Date: 1986-04-30
First Use in Commerce Date: 1986-04-30


To check it out, go to the USPTO's
Status page and enter the registration number.

The listed owner is George R. Francis, founder and CEO of AmCom General Corporation, the prior owner of the MY trademark. AmCom went through a series of purchases & sales, even once being technically owned by Clear Channel, the very company that owns the radio station in Lincoln, NE that has had to stop using MY! Phew. Check out the history here.

This just goes to show that there are twists & turns when it comes to trademarks.



The dispute between the two bands has been settled.

Wednesday, September 20, 2006

Do You Need a Registered Trademark?

Yup, pilfering from Marit's articles again – time seems to be an elusive friend as of late.

It's less of a need than a want. Registering a trademark is NOT mandatory. However, are you a business owner, or do you work with a business that does not currently have a trademark registered or pending with the USPTO? If this last statement in any way describes you, then YES, you may benefit from having a trademark. It is true that many businesses do not register a trademark with the USPTO, but this puts the business at a great disadvantage when compared to another company that does have a trademark.

Having a trademark notifies an individual that you have the corner on your market. It allows you to take court action if another business does attempt to infringe upon your name. You are essentially protecting your market upon registering a trademark by publicly individualizing your name. This protection allows a greater piece of mind for the average business owner, by ensuring that no one may interfere with your customer base by confusing their business with your own. The last scenario is a common occurrence, and many individuals have been forced to deal with legal repercussions because they did not take the time to trademark their name, while a competing business did.

Think about it like this; if your name was Tom Smith and you were a hard-worker, while there was another Tom Smith who was a poor worker, you wouldn’t want to be confused with that other individual, would you? As I mentioned above, this confusion is a common occurrence among businesses. This is why it is important to protect your name, and your products or services! While it is ultimately up to each business owner whether or not they want to protect their name, be aware of the potential ramifications that can come with not applying for a trademark. Whether or not your name is trademarked could have the ability to make or break your business; so why wouldn’t you apply for a trademark?


Tuesday, September 19, 2006

Red Rover, Red Rover, Send Ford ® Right Over

It was announced yesterday that Ford ® has acquired the Rover ® brand from BMW, which was part of deal made in 2000.

Part of this deal was a right of first refusal.


Wednesday, September 13, 2006

What is a Trademark Search?

Here's another great article written by Marit. The original can be read here.

A trademark search can, in actuality, be many different things. In theory, a trademark search is performed to determine whether or not the mark you are hoping to use is already taken by another. This allows an individual to apply with a greater level of confidence for the use of a trademark with the United States Patent and Trademark Office (herein referred to as the USPTO). A trademark search is, ideally, a comprehensive, analytical way of researching a name, slogan or logo for prior use.

A trademark search can also be performed in a sloppy and ineffective manner, and may not protect you from potentially infringing upon another’s name or logo. This is why it’s important to ensure that the trademark research you have commissioned is done comprehensively and thoroughly!

It is not unusual for a trademark research company to charge hundreds of dollars for searching the USPTO, which you can do for free. Comprehensive research firms search Federal, State and Common Law records, which is a more logical and thorough way to research your name. When commissioning research on your name, it is important to ask the company you’re considering using to clarify what exactly their searches entail, each step of the way.

Companies may try and save money in other ways, including letting you pour through the raw data they collect without any summary of what it all means. It is important to be sure once you’ve decided to commission research on your name, that the information is compiled into an easily readable report. Examining the results of your research can sometimes be difficult, even when placed in an edited report. If you’re left to decipher the meaning of a company’s raw data, chances are you may under react or overreact to the results.

When searching your name, it is important that phonetic spellings of the name are searched, as well as vowel variations. This should be done in order to find any potential matches of your name, whether these matches are similar or identical. Ultimately, the goal of the search is to allow an individual to apply for the searched name feeling as though they are informed, and free of any potential legal ramifications. Unless your search is comprehensive, there is no way to promise the same peace of mind a thorough search can!

Applying for a trademark does not have to be a painful, convoluted process. It can actually be quite easy if you follow the correct steps throughout! Remember, it is a process to research a name.

Monday, September 11, 2006

What is a Trademark?

Other matters are taking my time away from posting today, so here's a reprint of an article written by one of our researchers, Marit. The original article can be viewed here.

At one point or another, we’ve all seen a product or business name with a small, encircled R floating next to it. You’ve probably wondered what this R symbol really means, and how exactly it got there in the first place. Most people will tell you that it means something to the effect of “registered,” but that’s only a small part of the significance behind the circled R.

It’s correct that this symbol does imply the term registered, but registered with whom, and how?

A "registered trademark", or ®, refers to a name, slogan or logo that has been officially registered with the United States Patent and Trademark Office (USPTO). Registering a trademark is beneficial to a business because it publicly states that your trademark is registered with the USPTO and therefore, you have exclusive rights to that name within your industry. This means that if your business had a registered trademark, and you found another business of a similar nature utilizing your name or logo, you would *likely have the legal right to use your name!

Each time an individual applies for a trademark, the USPTO performs a cross reference check of their name and/or design for similarities among Federally registered or pending trademarks ONLY. The USPTO search is lacking in State trademark AND US National Common-Law databases. Because the USPTO protects names in this fashion, you do not run the risk of another business utilizing and possibly soiling the reputation of the company that you worked hard to build!

Once you have applied for your trademark, the USPTO will consider it a pending mark for up to 18 months. This is among the many reasons why it is important to apply for your trademark sooner versus later. The sooner you apply, the sooner it is that you will be doing business under a registered, protected name!

* This is dependent on if the name is truly available at the time of filing. In other words, was there a prior existing Federal or State trademark? Was there prior existing Common-Law usage of the name?

Friday, September 08, 2006

Trademark News: New Procedure at the USPTO

A few days ago, the USPTO announced a change in their procedure to submit "amendments/corrections to trademark applications after publication".

This got me thinking that this would be a good opportunity to remind readers to stay on top of your trademark filing. It's up to the applicant to be aware of their trademark's status; the USPTO is not going to remind applicants of anything. Also, if the USPTO sends you an email that you never got, it's up to you let them know.

That being said, here's how you check your status:

  • Go to the Status Page
  • Enter your 8-digit serial number (it will start with a 7) in the field and click Request Status
  • Your filing will pop right up. Two areas to pay attention to:
    • Current Status
    • Prosecution History

Here are the definitions to some of the more common status descriptions:

Abandoned

"An application that has been declared abandoned is "dead" and no longer pending. Abandonment occurs under several circumstances. The most common reason is when the USPTO does not receive a response to an Office Action letter from an applicant within 6 months from the date the Office action letter was mailed. Another instance is when the USPTO does not receive a Statement of Use (or request for an extension of time to file a statement of use) from an applicant within 6 months from the issuance of a Notice of Allowance). Applications abandoned for failure to respond to an Office Action or a Notice of Allowance can be revived or reinstated in certain circumstances.


Non-final action has been mailed

An Office action letter that raises new issues and usually is the first phase of the examination process. An examining attorney will issue a non-final Office action after reviewing the application for the first time. If a new issue arises after the applicant responds to the first non-final Office action, the examining attorney will issue another non-final Office action that sets forth the new issue(s) and continues any that remain outstanding. Applicants must respond to non-final Office action letters within 6 months from the date they are issued to avoid abandonment of the application."

Newly filed application, not yet assigned to an examining attorney.

Basically, this means that the application has been received but has not yet been assigned to the examining attorney. An examining attorney is "a USPTO employee who examines (reviews and determines compliance with the legal and regulatory requirements of) an application for registration of a federally registered trademark."


Wednesday, September 06, 2006

Copyrights and Patents: Visual Arts Copyright Registration

First, let's pinpoint what falls into the visual arts category. Here's the list of examples from the US Copyright Office:

"Examples of visual arts works:

  • Advertisements, commercial prints, labels
  • Artificial flowers and plants
  • Artwork applied to clothing or to other useful articles
  • Bumper stickers, decals, stickers
  • Cartographic works, such as maps, globes, relief models
  • Cartoons, comic strips
  • Collages
  • Dolls, toys
  • Drawings, paintings, murals
  • Enamel works
  • Fabric, floor, and wallcovering designs
  • Games, puzzles
  • Greeting cards, postcards, stationery
  • Holograms, computer and laser artwork
  • Jewelry designs
  • Models
  • Mosaics
  • Needlework and craft kits
  • Original prints, such as engravings, etchings, serigraphs, silk screen prints, woodblock prints
  • Patterns for sewing, knitting, crochet, needlework
  • Photographs, photomontages
  • Posters
  • Record jacket artwork or photography
  • Relief and intaglio prints
  • Reproductions, such as lithographs, collotypes
  • Sculpture, such as carvings, ceramics, figurines, maquettes, molds, relief sculptures
  • Stained glass designs
  • Stencils, cut-outs
  • Technical drawings, architectural drawings or plans, blueprints, diagrams, mechanical drawings
  • Weaving designs, lace designs, tapestries"

Now to file an application:

The application is fairly simple & the cost is $45 per application.

Despite what others state, a "poor man's" copyright is NOT the same as registering it. Here's what the US Copyright Office has to say:

"The practice of sending a copy of your own work to yourself is sometimes called a 'poor man’s copyright.' There is no provision in the copyright law regarding any such type of protection, and it is not a substitute for registration."

Lastly, here are two great resources for Copyrights, the Creative Arts & Music:

Tuesday, September 05, 2006

Trademark News: One Example of how Losing a Trademark Translates into Cash Money

Terry Wilson is about to make some dough for changing her name and foregoing her potential trademark for "TightPod"™. Read about it here.

A quick search of the USPTO shows about 500 live marks that contain the word POD. Some belong to Apple, some are registered but many are still pending. What does this mean for all those pending marks? Do they have big money coming down the pike? Or will they be going down Opposition road at the USPTO?