A Legal Blog by Aaron | Sanders, PLLC


Startups, Keep Your Trademark Registrations Fresh

Rick is an experienced Nashville intellectual-property litigator and an erstwhile part-time professor at Vanderbilt University Law School whose writing and teaching focuses on copyright issues but whose law practice involves a wide variety of IP-related disputes.

How Some Crummy T-Shirts & a College You Probably Never Heard of Might Inform Your Trademark Strategy

Let’s say you started your company up several years ago. You called it BLERGLE. Back then, your company was a software development shop. Because you’re you, you worked with a lawyer to apply for and obtain a federal registration of BLERGLE for “software development services.” Later, your company expanded naturally into web design, handling both front-end and back-end design and development. The thing is, you and your fellow founders aren’t really software folks. Deep down, you’re all hardware folks. And you all discover that, thanks to all the software development you’ve been doing, you can make a mobile game controller made specifically to play online browser games that don’t work well on smart phones.

You start making and selling these BLERGLE mobile browser game controllers, and they’re a hit. Parents like them because they’re cheap, they can control what games their children can play, and their children will stop begging to play games on the parents’ smart phones. Also, the controllers are excellent for playing “slither.io.”

Alas, with success come competitors—almost immediately. Within a couple of months, one starts to sell a FLARGLE mobile browser…

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Netflix sends hilarious cease and desist letter. But should it have?

Tara is an experienced Nashville intellectual property lawyer with particular interests in managing international IP portfolios and helping start-ups develop IP assets.

 

It has been a welcome development in the art of cease-and-desist and demand-letter writing lately: Rather than a stern warning with paragraphs of statutory citations and threats of “treble” and punitive damages to the moon, companies have had their counsel user a lighter touch, cajoling with charm rather than terrorizing with money damages. Recall the lovely letter received by the author of the book “Broken Piano For President,”** which used a Western saloon-style scroll that Jack Daniels thought was remarkably reminiscent of the scrolls on the label of a bottle of its whiskey.  “We have to be diligent,” said Jack Daniels, as if the letter was a chore that had to be carried out by whichever lawyer drew the short straw. “We’re sure you didn’t mean it,” and all we’re asking is that you “change the cover design when the book is re-printed” (because we’re SURE you’ll make it to re-print, buddy….) The letter went viral, a beacon of a new day in C&D letter writing style. I’ve even written a few of my own cheeky letters since then.

The latest of these is a letter from Netflix to the owners of a bar in Chicago who, in honor of…

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WOO! What Bachelorette Parties in Nashville Can Teach You About Trademarks and Trademark Registrations

Rick is an experienced Nashville intellectual-property litigator and an erstwhile part-time professor at Vanderbilt University Law School whose writing and teaching focuses on copyright issues but whose law practice involves a wide variety of IP-related disputes.

A PEDAL TAVERN by Any Other Name Would Still Be as Annoying

On my way back to Nashville (from Los Angeles) last week, I found myself in the back of the plane with not one, but two bachelorette parties. It wasn’t quite noon (Pacific time), but several of the members were already pretty drunk, and they all had a grand time. You might assume that I was just really unlucky, but when you consider how many bachelorette parties there are at any one time in Nashville, and that almost all have to fly into Nashville, you’d conclude that it was amazing I hadn’t encountered two on the same plane before.

Now, I don’t want to say anything bad or dismissive about bachelorette parties, even though we all find them a trifle annoying. They constitute 16.67% of the overall Nashville economy and give rise to about 20% of all civil lawsuits here, so it’s sort of important that we bite our tongues and tolerate them. Without them, the local AirBNB market would collapse, which would hurt the market for tearing down old homes and replacing them with two-towers-on-a-single-lot. Bars and honky-tonks would be hurt, and several of them would probably go out…

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A Registered Weak Trademark Is Still a Weak Trademark: How to Build Up a Strong Trademark

Rick is an experienced Nashville intellectual-property litigator and an erstwhile part-time professor at Vanderbilt University Law School whose writing and teaching focuses on copyright issues but whose law practice involves a wide variety of IP-related disputes.

Trademark Registrations Are Important, but Not the Way Many Markholders Think

In my high school “health and guidance” class, I was taught that you can’t sober up a drunk with coffee. All you get, I was told, was a wide-awake drunk. Although now stimulated, the guy’s motor skills were just as impaired as before. I don’t know if that’s still the received wisdom—this was the 1980’s, after all—but it’s a lesson I took to heart. Coffee doesn’t sober up a drunk, and lipstick doesn’t make a pig pretty.

And a registration doesn’t make a trademark strong. If you manage to register a weak trademark, all you get is a registered weak trademark. Trademark registrations don’t generate trademarks out of thin air. They make already-existing trademarks stronger. They are force multipliers. If your trademark is strong, then a registration will make it considerably stronger. But just as multiplying a tiny number still results in another (slightly larger) tiny number, a registration doesn’t add that much to weak trademarks.

The Brawny Poetry of Trademarks

What makes a trademark strong, if not registration? Trademark strength has two ingredients, and you (the trademark owner) control both of them: inherent distinctiveness and goodwill. Goodwill arises from consumers’ recognition…

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Gambling Away from the Track: Trademark Confusion and Horse Racing in the 6th Circuit

Tara is an experienced Nashville intellectual property lawyer with particular interests in managing international IP portfolios and helping start-ups develop IP assets.

It’s Derby time!  I don’t live in Louisville, but I used to spend a lot of time there for work, and when I was in college at Vanderbilt University, the Kentucky Derby would always be the Saturday right after finals ended and was only a two hour drive up I-65.  As poor college kids we drank watered down Mint Juleps and got soaked and muddy in the infield and of course never saw a horse, but it was always a great time. Now, I mostly just watch it on TV and pick a horse based on whether Bob Baffert has trained it, since you can’t bet on the jockey Bill Shoemaker anymore, which is what my grandfather always said you should do.

The enormous business of horse-racing and all the merchandising that goes along with it causes horse tracks to occasionally get aggressive with their trademark ownership.  Courts in the Sixth Circuit sees their fair share of these cases, since Central Kentucky is Horse Country, and has been Horseracing Country since the late 19th Century (thanks to a crackdown on gambling in New York brought about by the women of the Progressive Movement.)

The latest case to reach the Sixth Circuit,…

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