Once you have identified your marks and sought protection through registration for some or all of them, there are still going to be other issues that you will need to consider. Trademark owners have an obligation to police their marks and take steps to stop infringers. Otherwise, they may run the risk that someone else will profit off their marks or tarnish the reputation they have developed for those marks. In extreme cases, the failure to police one’s marks may result in losing them entirely. The biggest issues in trademark protection today arise from the use of trademarks on the Internet. In this blog, we identify some situations that you may encounter or want to think about.

Also, note that we have set a date for our free webinar – please join us on November 15th at 1pm Eastern Time for a live overview of the many issues we have discussed in this series. You can register here.

Cybersquatting

You undoubtedly have one or more websites to promote your services, to interact with your listeners or viewers or to make video or audio available for online viewing or listening. You have spent a fair amount of time and money promoting your sites. Then, you learn that someone else has registered and is using a domain name that is confusingly similar to your domain name or one of your trademarks to attract traffic to their site. There are numerous ways that these cybersquatters can register a variation on your domain name or mark: adding (or dropping) a hyphen, adding a generic term, misspelling a word, omitting a letter, and replacing the letter “o” with a “zero” or the letter “l” with a “one” are some of the most common.
Continue Reading Trademark Basics, Part Five: Trademarks on the Internet

Last week, we discussed the benefits of federally registering your trademarks.  But having a few federal registrations under your belt doesn’t mean your task of building a valuable trademark portfolio is complete.  There are several additional steps you can take to make sure you are managing your trademarks wisely and getting the most value from them.

As we discussed last week, federal registration gives you many benefits and it is the most cost-effective way to protect your brand.  Once you have those registrations in hand, however, it is important to periodically take stock in what you own and what you are (or are no longer) using.  This can help you identify (1) new brands that can be exploited, potentially opening up new lines of licensing revenue, (2) vulnerabilities in your current trademark practices that could expose you to the risk of litigation, and (3) cost savings by identifying marks that are no longer in use and discontinuing their maintenance and enforcement.  Proactively maintaining your trademark portfolio can also help you avoid surprises.  Imagine discovering that an important trademark registration has lapsed only through the due diligence being conducted by a potential buyer of your station or station group.  Not only is that an embarrassing position to be in, but it could compromise your valuation and your negotiating power.
Continue Reading Trademark Basics Part 4: Trademark Housekeeping 101 – Conducting a Trademark Audit

In last week’s Part Two of our series on Trademark Basics, we discussed the benefits of conducting a clearance search to try to ensure that the mark you are considering adopting doesn’t infringe on the rights of anyone else. Say the results of your clearance search have come back clean and, according to your trusted legal advisor, you should be able to use your trademark without worrying about being slapped with a demand letter. Why not just use your mark and save yourself the time and money it takes to obtain a federal registration?

Quite simply, federal registration gives you many valuable benefits at an extremely low cost (the filing fee for a trademark application can be as low as $225), and it is the most cost effective way to protect your brand. Here are the top nine reasons you should take the next step and file a trademark application with the Patent and Trademark Office (PTO), along with a quick overview of the registration process. For those of you that have been following our five part series on Trademark Basics, we will divulge the 10th reason for seeking federal registration in our upcoming trademark webinar, the date for which we will be announcing soon.
Continue Reading Trademark Basics, Part Three: Nine Benefits of Federally Registering Your Trademarks (and How to Register)

In last week’s article beginning this series on Trademark Basics, we gave an overview of trademark basics and discussed why building up a strong trademark portfolio should be an important part of any media company’s overall business strategy.  This week, we will discuss why identifying marks that you may use must be a key feature of your branding strategy.  The reason is simple – you don’t want to invest thousands of dollars in a mark – building websites and social media campaigns around it, promoting it on air, creating bumper stickers, calendars, t-shirts, and other swag – only to get slapped with a demand letter from someone claiming that it owns the rights to that mark.  That user can potentially force you to cease using the mark on air and online, destroy all physical materials that use the mark, and pay damages for your infringing use of the mark.  This development could blow a station’s marketing budget in the blink of an eye.  Thankfully, this scenario is avoidable by doing some advance sleuthing before committing to a mark.  So, what steps can you take to stay out of legal hot water?

There is a common misconception that, once you register a trademark at the federal level, you are “protected” against any claims of infringement.  As a result, many companies skip the sleuthing and simply file a federal trademark application when they adopt a new mark.  This is a very dangerous practice that could potentially cost you in the end because the application might be rejected by the Trademark Office or opposed by someone with prior rights in the mark.  Indeed, even if a mark is federally registered, someone with prior rights has five years in which to challenge your use or registration of the mark.  In order to minimize these possibilities, it is critical that, before you settle on a new mark, you conduct a trademark search.  Running a search will allow you to see what, if any, other parties may have rights in marks identical or similar to your proposed mark.  What does this entail, exactly?
Continue Reading Trademark Basics, Part Two:  How Trademark Searches Can Keep You Out Of Legal Hot Water

This week, I was given 15 minutes at the RAIN (Radio and Internet Newsletter) Summit in Nashville to summarize all of the legal issues that are important to digital audio companies including webcasters and podcasters.  While getting everything into a presentation that short entailed some speed talking and the briefest description of many very complicated

In today’s digital economy, trademarks are often the most valuable assets that a business owns.  For example, in 2015, Google’s trademark portfolio was estimated to be worth $76 billion, which constituted almost one third of the entire value of the company.  Microsoft clocked in at $67 billion, with Verizon close behind at almost $60 billion.  While you may not hit 11-digit figures like these intellectual property behemoths, a smart trademark strategy can put you on the right course.  This blog is the first of a five-part series that will help you understand trademarks and how they function, so that you can maximize the value of your own trademark portfolio.  We’ll run the other four articles on the next four Tuesdays (“Trademark Tuesday”) and plan to offer a free webinar covering trademark basics at the end.  So keep reading!

So, what is a trademark?  A trademark identifies products or services as coming from a particular source.  Although a trademark is usually a word, a phrase or a design, it can also consist of or incorporate features such as color, smell, taste, shape (product configuration), touch, motion and sound.  But not all trademarks are created equal.  A strong mark can preclude the use by others of somewhat similar marks for goods and services that may not be directly competitive.  In contrast, a weak mark may only be entitled to protection against the use of an identical mark for the same goods and services.  How do select a trademark that will most effectively help you build your brand?
Continue Reading Trademark Basics for Media Companies, Part One: What Trademarks Are and Why They Matter

A few weeks ago, we wrote here about the risks of using in advertising and promotions the Olympic trademarks, symbols or marks that may suggest an association with the Olympic Games.  The Olympic Committee recently demonstrated just how serious it is about its marks, sending a letter to non-Olympic sponsor companies, warning them  that they “may not post about the Trials or Games on their corporate social media accounts,” and may not  use the “USOC’s trademarks in hashtags such as #Rio2016 or #TeamUSA” (presumably to protect the investments of Olympic sponsors).  According to ESPN, which obtained a copy of the letter, it goes on to say that a “company whose primary mission is not media-related cannot reference any Olympic results, cannot share or repost anything from the official Olympic account and cannot use any pictures taken at the Olympics.”  Apparel company Oiselle tested the waters earlier this month by posting a photo of athlete Kate Grace after winning the 800 meters at the trials, and was promptly contacted by USOC with a request to remove the pictures (the company opted to leave the pictures up but blurred any Olympic imagery).  So while media companies have some wiggle room to cover the news from Rio, non-media companies are essentially on an Olympic-sized lockdown.

This restrictive stance did not go unnoticed by comedian Stephen Colbert, who earlier this week took the Olympic Committee to the mat with a biting parody that pokes fun at the Committee’s militant protection of its trademarks.  Colbert’s routine, available here, cleverly turns the Olympic rings into five interlocking CBS symbols and introduces the show’s new summer sponsor, MUSA TEA.  After explaining that the tea is brewed “from the freshest mint in Morocco’s Musa mountains,” he encourages fans to share with family and friends by using the hashtag #TEAMUSA.
Continue Reading Stephen Colbert Brews Up a Parody on Aggressive Protection of Olympic Trademarks

Prospective advertisers come to your station and describe their ideas for local ads. A realtor’s ad ends with “There’s no place like home.” A boat builder says he will tell buyers, “You’re going to need a bigger boat.” And, a used car salesperson wants to say “I’m gonna make you an offer you can’t refuse.” These are pretty clever and, after all, they are everyday catchphrases, right?

Just don’t do it.

Advertising campaigns can be a source of legal liability for broadcasters when they merely allude to famous creative content that is protected under intellectual property laws. The recent decision in Lion’s Gate Entertainment, Inc. v. TD Ameritrade Services Company, Inc. demonstrates how broadcasters that publish ads containing pop culture references can run afoul of trademark rights and other legal issues.
Continue Reading Dirty Dancing with Trademark Rights: How Pop Culture References in Ads Can Raise Legal Issues

Over the last several months, we have written about the risks of publishing ads or engaging in promotional activities that refer to the SUPER BOWL® or MARCH MADNESS® without first asking the NFL or the NCAA, respectively, for permission to use those marks.  With millions of viewers about to tune into the OLYMPIC® games in Rio this August, we similarly remind our readers that any Olympic trademarks, symbols or other branded content should not be used in advertising and marketing campaigns across any media platforms (on-air, websites, social media sites, in hashtags, apps, etc.) except by authorized advertisers.  And, for the reasons we discuss below, dealing with these marks deserve an Olympic-size dollop of caution.

We’ve written before (here and here) how Olympic sponsors pay big bucks for the rights to sponsor the Olympics, and to get exclusivity to associate their brands with the games. Thus, the sponsors guard their territory carefully, as do the Olympic organizations whose ability to stage the games is dependent on such sponsorship.  Numerous small businesses, nonprofits, and even individuals have been on the receiving end of cease and desist letters, including, for example, a knitting group that used the term RAVELYMPICS for a knitting competition, a charcuterie in Portland named OLYMPIC PROVISIONS, and a Philadelphia sub shop named OLYMPIC GYRO.
Continue Reading Avoiding Olympic Hassles – Trademark and Other Legal Protections Limit the Use of Olympics, Paralympics and Related Terms in Advertising, Marketing, and Promotions

Can the name of a state be trademarked so that no one else can use it in a particular line of business? Last week, in connection with the denial of the trademark application filed by the producers of the podcast SERIAL, we wrote about the difficulty of trademarking brands that are descriptive of the product that they promote. What could be more descriptive than the name of a place where the product originates? Yet on Sunday, the NY Times ran a front page story about a legal moonshiner in Kentucky who is being sued by the University of Kentucky for using the name KENTUCKY MIST on shirts and hats to promote his craft moonshine. The University claimed that it owns the trademark for the word “Kentucky” when used on clothing. Can they really do that? Does a media company need to worry about branding a program featuring the name of the geographic location in which they operate?

It depends. Trademark law is, among other things, designed to protect consumers from confusion. When the Trademark Office is analyzing a new federal trademark application, it will look to see whether a mark is “confusingly similar” to any existing registrations or pending applications. As part of this analysis, it will analyze the similarity of the marks, the types of goods and services offered in connection with the marks, and the channels of trade used to sell or promote the goods/services. If a proposed mark is too close on these fronts to a registered mark, the Office may deny the application (or in the case of a lawsuit, a court may find merit to the infringement claim). This can happen even if the mark incorporates a descriptive term, like a geographic area. Does this mean that broadcasters are precluded from incorporating the name of their state in a program title or station tagline if there is an existing registration for that state name? Thankfully, no – but it doesn’t mean that you shouldn’t do your due diligence before adopting your mark. Below are a few tips to help you assess whether your proposed mark is at risk of getting into trademark hot water.
Continue Reading Can You Trademark A State’s Name? Can Such a Trademark Affect a Broadcast Program Title or Other Product Names?