Kelly Donohue

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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?

This article was written by two new contributors to the Blog, trademark attorneys Radhika “Ronnie” Raju and Kelly Donohue.

According to the Patent and Trademark Office (PTO), the answer is “No,” as the PTO recently refused an application by the producer of the podcast to register the mark SERIAL for an ongoing audio program, finding that the mark was too “descriptive” to be registered (the decision and related documents can be found here – note it is a relatively big file). This case demonstrates the need for companies and other content creators to be creative in choosing the brands by which their works will be known, as a name that is too generic may face hurdles like this one when the creator tries to protect its brand through a federal trademark registration. Media companies all need to think carefully about program names and other brands to be sure that they can be protected – especially if they hit it big.

SERIAL is the Peabody award-winning podcast from the creators of the public radio program This American Life. The podcast, narrated by journalist Sarah Koening, is a long form story, told over the course of multiple episodes, that looks into the 1999 murder of Hae Min Lee and the resulting conviction of her former boyfriend, Adnan Masud Syed. Since its launch in October 2014, Season 1 has been downloaded in the United States over 80 million times, with episodes still being downloaded at a clip of over a 100,000 times a month. Season 2 of SERIAL just concluded last week. Media observers have called SERIAL a phenomenon which fueled the 2014 podcast renaissance. Given that it is so well-known and successful, why did the PTO refuse to register the name of this groundbreaking podcast?
Continue Reading SERIAL Trademark Denied – Should One of the Most Popular Podcasts Ever Be Able to Protect Its Name?