The protection of brands, slogans, positioning statements and program titles must be a high priority of any electronic media company. These assets establish the identity of any broadcaster, webcaster or other media company. Media companies need to protect these assets through the rights accorded by trademark law. We have been running a series of articles
Over the last few weeks, we’ve offered insights about how you can stay out of legal hot water by establishing good practices with regard to your company’s trademark portfolio (see Part 5 of our Trade Basics series here, which contains links at the end to the other parts of the series). Unfortunately, not all companies have followed such wisdom. With Halloween just around the corner, we thought you might appreciate some Tips and Tales from the Trademark Crypt!
To help you avoid becoming another trademark horror story, don’t forget to dial into our upcoming Trademark Basics webinar, November 15th at 1pm Eastern Time for a live overview of the many issues we have discussed in the last few weeks. Register here today!
- Searching Proposed Descriptive Marks. We have previously discussed how descriptive marks may become protectable as trademarks if they acquire what is known as “secondary meaning.” Just because a mark is descriptive doesn’t mean that you shouldn’t conduct a trademark search. In 1984, the manufacturer of GATORADE® beverages decided to use the slogan “Gatorade is Thirst Aid.” Its in-house counsel concluded that “Thirst Aid” was merely descriptive and therefore did not run a search before approving the slogan. A search would have revealed that the mark THIRST-AID® had been in use since 1921 and had been registered since 1950 in connection with soft drink products. The owner of the THIRST-AID® mark filed a trademark infringement claim and ultimately was awarded in excess of $10,000,000 in damages.
- Running Down All Potential Impediments. Due diligence means more than running a trademark search. It means taking appropriate action to run down possible impediments before proceeding. In one case, a company named “Big O” used the marks “Big O Big Foot 60” and “Big O Big Foot 70” for tires, but its application to register BIG FOOT as a trademark was denied. Subsequently, Goodyear began using BIG FOOT for snowmobile tracks and, later, for tires. It ran a trademark search and concluded that there were no conflicting marks. It is not clear, but, most likely, the person who reviewed the search saw Big O’s abandoned application, but may not have tried to determine whether the mark was still in use. (It should be noted, however, that in 1974, the ability to locate marks that were in use, but were not registered, was far more limited than today.) In any event, a jury awarded Big O $2.8 million in damages (which was reduced to $678,302 on appeal) and $16.8 million in punitive damages (which was reduced to approximately $4.1 million on appeal).
- Running Down All Potential Impediments – Part 2. Many companies translate their marks into Spanish for purposes of marketing to the Hispanic community. Even with a well-established trademark, a search should be conducted for the translated mark. Several months ago, a trademark infringement action was filed against Kentucky Fried Chicken for using “Para chuparse los dedos” on the basis that it is the Spanish-language translation of “Finger Lickin’ Good.” The plaintiff owns a restaurant in Southern California and has a registration for a logo that contains the identical phrase, “Para Chuparse Los Dedos,” which it says translates to “To Lick Your Fingers” in English. (We offer no comment on the possible outcome of this litigation, but mention it to illustrate the need for a thorough and competent trademark search before using almost any new mark.)
- Clearing Advertising Copy. Famed boxing announcer Michael Buffer has reportedly been involved with at least 100 legal actions over his famous catchphrase LET’S GET READY TO RUMBLE® and claims to have never lost a case. Unfortunately, many radio stations and other media outlets have used the phrase without authorization (presumably without first consulting counsel), with many not aware that the catchphrase is legally protected, and have ended up on the receiving end of a cease and desist letter from Buffer’s attorney. At least one station was brought to court and was held liable for $175,000 worth of damages, while other awards have ranged from four to six figures.
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