A Legal Blog by Aaron | Sanders, PLLC


Catch Downtown Fever! Why Trademark Ownership Disputes Are the Worst

Who Owns the Jelly Nailed to the Wall?

There are few legal holy messes like a dispute over trademark ownership. Sure, copyright and patent ownership disputes can be messy, but nothing like trademark ownership. And, sure, copyright ownership can be tricky, but it’s a walk in the park compared to trademark ownership. Here are some reasons why:

There can normally be only one owner of a trademark for a given set of products in a given market. Why? That’s because a trademark serves as a link between products and a single source. In contrast, copyrights and patents can have multiple owners.
But there can be multiple legitimate owners of trademarks for the same or similar products, if (a) they are geographically remote from each other AND (b) the later (“junior”) user isn’t on notice about the earlier use (which is often the case). Why? Because the point of a trademark is to prevent confusion, and there’s chance of confusion if different owners are far enough away from each other. Copyrights and patents, by contrast, automatically have national scope.
The owner of a trademark is the one who “actually uses” it for the products in the market. But often many hands are involved in…

WE WANT DOWNTOWN FEVER! WE WANT DOWNTOWN FEVER! (Even if we would have to go to a different club to see them?) By Asroma - Own work, CC BY-SA 3.0, https://commons.wikimedia.org/w/index.php?curid=6746532

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Crying in Your Beer: With Trademarks, Get Clearance Before Falling in Love

Applications to Register a Trademark Can Give Away Your Position

BLACK OPS is a great name for beer. It suggests (and doesn’t merely describe) the beer as dark, secret and elite. It’s as though only you and a select few know about this beer.

The thing about excellent trademarks is that great minds often think alike, and more than one person is likely to independently hit upon the same clever trademark. But, usually, there can only be one—the one used in commerce first. This is known as priority.

There Can Only Be One! (But Where?)

In the old days, it was not unusual for similar trademarks for similar goods to co-exist, provided they were far enough away from each other. But increasing mobility, the development of national markets and distribution systems, the internet and, most of all, federal trademark registration have changed that. Nowadays, it’s actually pretty uncommon for a product’s market to be geographically limited. You can sell nearly any moveable product nationwide, and even services are increasingly available to remote customers.

The way it used to work is like this: Say Xena started selling NOS HABEBIT hummus in Florida in 2000, and Yanni independently started selling NOS HABEBIT hummus in Oregon in…

Plaintiff's BROOKLYN BLACK OPS on the left (only $29.00 a bottle!), Defendant's BLOCK OPS BREWERY on the right.

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NAACP and WD-40: A Primer on When We Need, and Don’t Need, Fair Use in Trademark Cases

Fair Use Has a Weird Relationship with Trademark

By now you know that fair use is a squishy, fact-intensive, unpredictable but absolutely necessary feature of copyright law. But at least fair use’s role in copyright law is well understood. It’s just hard to apply.

Fair use in trademark law, however, is another matter, as two recent appellate-level decisions involving the NAACP and WD-40 demonstrate. We don’t always even know how it works within the context of trademark law. In theory, it’s an “affirmative defense.” With an affirmative defense, even if you’ve broken the law, we say it’s still OK, often because we recognize some greater social good. In the context of copyright, we’re saying that, even if you copy stuff that’s protected by copyright, it’s OK because what you’ve done is more socially good than holding you liable for copying.

It’s Confusing Because of Confusion

But with trademark, applying fair use as an affirmative defense requires us to say something a little weird. The key concept in trademark law is confusion. Trademark law exists to prevent consumers from being confused and buying one product when they thought they were buying another, or thinking one product had a quality that it doesn’t really have. So,…

Sometimes confusion is fun, but not when you're thinking about buying stuff. "From Confusion Hill" by Hitchster, Creative Commons Attribution 2.0 Generic license.

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It Happens Even to Fancy Companies: Downstream Intellectual Property Liability

Don’t Ignore it; Manage it.

Let’s say you’re a retailer. You buy stuff from a reputable manufacturer or middleman and turn around the sell it to the general public. You’re pretty safe from most intellectual-property concerns, right? If what you’re selling turns out to be counterfeit, that’s not your problem, right? You did all you could to avoid counterfeits, mostly by making sure your sellers are reputable. Besides, you didn’t do anything wrong—whoever made the counterfeit did. The same thing goes for patent infringement—not your fault, right?

It might not be your fault, but it is, unfortunately, still your responsibility, as a recent case involving Fossil and Macy’s demonstrates. Intellectual property law cares not (much) about morality and “fault,” but can and will impose liability on parties we’d otherwise think of as blameless. As a business owner or manager, all you can do is take sensible steps to reduce your company’s exposure.

What Is Downstream Liability?

Welcome to the horrible world of “downstream liability.” Unfortunately, it is an infringement of trademark and patent rights to sell infringing items; and it’s an infringement of copyright to “distribute” copyrighted materials. Patent, copyright and trademark laws don’t care very much about “fault.” If someone up your…

Hmm, but is it genuine? Better check the clasp. Photo by Ben Schumin, licensed under Creative Commons Attribution-Share Alike 2.5 Generic license.

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Bald Attempt to Use Trademark Law to Silence Criticism Is Defeated

It’s Outrage Week!

I know this is hard on the heels of my take on an outrageous attempt to leverage a dicey trademark registration into some settlement money, but at least there, you could admire the guy’s chutzpah. What I want to talk about today is willfully ignorant bullying—by government officials.

What is it, exactly, about small-time politicians and their complete inability to handle criticism? (WARNING: the second link was manufactured on machinery that also manufactures satire.)

Defending the Honor of the Murderous Seal

Anyway, Union County, New Jersey, like other counties in the United States, has a nice little seal. Here it is.

Isn’t it precious? I like the colonial-era house and—wait—what’s that? I think that’s a redcoat shooting at someone? That’s not nice. Well, I’m sure there’s an interesting story behind it. Indeed, there is. It depicts the killing of Hannah Caldwell during the Revolutionary War at the hands of a British soldier. At the time, New Jerseyans were wavering about which side to support, and the news of her murder tipped the scales in favor of the Revolution. One suspects a bit of propaganda was involved, but so it goes.

A political activist, Tina Renna, has a local-access program in Union County.…

CountyOfUnionSeal

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