Right of Publicity: NBA Star Sues Over Ex-Wife's Appearance on Reality Show

American professional basketball player Gilbert Arenas is suing reality show “Basketball Wives”  over their casting of his ex-wife. The production studio released a partial cast list in June 2011, and in promotional materials made implied references to Arenas. The argument being made is that “the very presence of defendant Govan and the title of the show is an obvious reference to plaintiff and use of plaintiff’s likeness” and that the show is “likely to mislead or confuse consumers that defendant Govan is either married to plaintiff and/or has special insight into plaintiff’s current life.”

Generally speaking, American trademarks law provides protection for one’s image. Infringement of one’s “right of publicity” occurs when a company uses someone’s image or likeness in a commercial way without that person’s authorization, and a significant amount of people can identify the right-holder in that unauthorized use. It is the idea that a company is using someone’s image, in this case Arenas’, to benefit commercially without Arenas’ authorization. Note that the right of publicity differs from a defamation or false endorsement claim on the point of falsity. The right of publicity concerns unauthorized commercial use; whereas false endorsement concerns unauthorized use that is false (example: if the show was called “Stories From the Mouths of Deadbeat-Drugaddict-Dress-wearing NBA Players: Basketball Wives” and it was not true).

If it could be proven that the title “Basketball Wives” triggers the assumption in viewers that the NBA players endorse the show, there could also be a claim against Basketball Wives as most of the cast members are not actually wives, but girlfriends or exes. The show benefits from the fact that the cast members are all associated with NBA players, and is freeriding off the association of the NBA with the show. I may be wrong, but I’m curious to see how well the show would do if the basketball player boyfriends/husbands in “Basketball Wives” were a group of friends who liked to play pickup games after their 9-5 jobs.

– ck

Right of Publicity: NBA Star Sues Over Ex-Wife’s Appearance on Reality Show

American professional basketball player Gilbert Arenas is suing reality show “Basketball Wives”  over their casting of his ex-wife. The production studio released a partial cast list in June 2011, and in promotional materials made implied references to Arenas. The argument being made is that “the very presence of defendant Govan and the title of the show is an obvious reference to plaintiff and use of plaintiff’s likeness” and that the show is “likely to mislead or confuse consumers that defendant Govan is either married to plaintiff and/or has special insight into plaintiff’s current life.”

Generally speaking, American trademarks law provides protection for one’s image. Infringement of one’s “right of publicity” occurs when a company uses someone’s image or likeness in a commercial way without that person’s authorization, and a significant amount of people can identify the right-holder in that unauthorized use. It is the idea that a company is using someone’s image, in this case Arenas’, to benefit commercially without Arenas’ authorization. Note that the right of publicity differs from a defamation or false endorsement claim on the point of falsity. The right of publicity concerns unauthorized commercial use; whereas false endorsement concerns unauthorized use that is false (example: if the show was called “Stories From the Mouths of Deadbeat-Drugaddict-Dress-wearing NBA Players: Basketball Wives” and it was not true).

If it could be proven that the title “Basketball Wives” triggers the assumption in viewers that the NBA players endorse the show, there could also be a claim against Basketball Wives as most of the cast members are not actually wives, but girlfriends or exes. The show benefits from the fact that the cast members are all associated with NBA players, and is freeriding off the association of the NBA with the show. I may be wrong, but I’m curious to see how well the show would do if the basketball player boyfriends/husbands in “Basketball Wives” were a group of friends who liked to play pickup games after their 9-5 jobs.

– ck

Likely to be Confusing: The Sight, Sound, and Meaning Test

American trademark law protects the owner of a trademark from any person or company who uses a mark that is similar to theirs. The test used to determine how similar two marks are is called the “Likelihood of Confusion” test, and is very much likely to be confusing in and of itself! What an individual or business owner needs to know is that its mark CANNOT be likely to confuse a consumer, or else they face failure in registering their mark and/or being sued for infringing on someone else’s existing mark. It is such a loaded concept, that it gets its own category for blog posts, as many complexities lurk beneath the deceptively simple title.

Know the “sight, sound, and meaning” test, typically applied to word marks (as opposed to artistic marks such as logos). The law will look at two marks, and compare them based on how they look, how they sound, and their meanings, to determine whether consumers would be confused between the two marks.

• Sight. Look at the two words. Words can be spelled differently, but still look the same: OfficeMax and Off1ceMax; Logitech and Logit3ch; NextSpace and NexPace. These examples would likely fail the “sight” test.

• Sound. Say the words aloud. Do they sound different? Think: Maldonado Ergonomics and Avocado Economics; S-Prie and Espirit; Cisco and Sysco. These examples would likely fail the “sound” test.

• Meaning. Do the meanings of the words conjure up similar thoughts or imagery? Think: Tornado Laundry and Cyclone Laundry; Jaguar Auto and Cheetah Auto; Oranges & Lemons Market and Citrus Grocers. These examples would likely fail the “meaning” test.

While failing any one of sight/sound/meaning test does not lead to an automatic Likelihood of Confusion finding…it could. This is why it is useful to have proposed names vetted by a trademark lawyer before investing significant time and energy into your company name and/or mark.

 

– ck

When Should I Have aTrademark Lawyer?

One answer to this question is: Whenever you are about to invest a significant amount of time and money into your branding/corporate identity. The earlier, the better, as rush jobs will naturally cost you more.

You also want to make sure you hire someone that really knows and understands trademark law, not just an attorney who files trademark applications as part of his or her overall law practice. It is true that filing a trademark application is fairly simple, but having expertise matters the most when the application process goes less than smoothly, which is a somewhat regular occurrence.

This is the situation I want business owners to avoid: you pay a designer to develop product packaging for a new line of goods. Then, before contacting a trademark lawyer, you have a printer print 35,000 labels. Or worse, you contacted a non-expert who conducts an inadequate search, and then “OK’d” the design (without knowing that the severity of the situation requires them to use a third party professional search report), and then print the 35,000 labels. Months pass by, and the US Patent and Trademark Office denies your trademark registration because there’s a company in Iowa with similar product packaging, and that company is now opposing your trademark too.

This is what I want you to avoid.

What the Heck Do I Call Myself?

Selecting a business name can be more of a chore than you think it is before you really get into it. Here’s a list of thinking points that I came up with as I am currently developing a new name for my own law practice:

• Availability of the domain name
• If someone else is using it (check the California Secretary of State for LLC’s and corporations, check the USPTO for trademark registrations of your name idea; click “search marks” under the Trademark column)
• Does the name convey the important characteristics of your company/product?
• Will the name appeal to your target market?
• Will the name be distinctive enough to be registrable as a trademark?
• Will the name be easy to remember if someone read it?
• Will the name be easy to remember if someone only heard it?
• Will the name be easy to spell (and therefore easy to Google) if someone only heard it?
• Your company name doesn’t have to do it all; keep in mind that you can always have a tagline with your company name (Ex – McDonalds + “I’m lovin’ it”)
• In the future, it is easier to switch taglines rather than company names

This is only a list off the top of my head to help you start your brainstorming. Alternatively, you can avoid this process if you have several thousand dollars laying around and want to hire a consultant to develop a name for your company.

– ck

What is Trademark-Able?

Just about everything, so long as you use it commercially to identify the source of your products, and so long as it is not “confusingly similar” to a competitor’s mark.

Company Name and Slogan – “Nike” and “Just Do It”

Domain Names – godaddy.com

Colors – Tiffany’s blue, T-Mobile pink

Sounds – MGM Studio’s lion roar

Smells – Only if the smell isn’t “functional” (ie – fragrances don’t count). A trademark is registered for a plumeria scent for a company that sells plumeria scented yarn.

Product Packaging – The Coca-Cola Bottle

Restaurant Decor – Think classic Taco Bell, KFC, McDonald’s storefronts.

The key is to remember that sometimes it is not so much what is being sought for a trademark registration, but how you use it.

– ck

How Strong is My Company Name as a Trademark?

If you ultimately want your company name and logo to be federally registered with the US Patent and Trademark Office (USPTO), you should be informed of the different levels of strength for trademarks. While you may have a registered trademark, it may be of a weaker value and stands to lose its registration if a competitor opposes your registration. Oppositely, while you may have been initially denied a trademark registration, you may be a small effort away from elevating your proposed logo or name into a mark the USPTO will register.

To be brief, here is a range of trademark strength:

Generic (no registration): These terms describe the industry in which the company operates, and are not registrable because these words must be saved for all companies in that industry to use. (“Apple” for an apple company, “Cars” for a car company)

Descriptive (registration if “secondary meaning”): These terms merely describe a company or its products, and may only be registered if the USPTO determines that the proposed mark has a meaning other than just being descriptive. (“Fast Cars” for a car company probably has no secondary meaning, while “TurboTax” for a tax software company does have secondary meaning)

Suggestive (registrable): Words that suggest certain qualities of a company or its products are considered suggestive trademarks. (“Jaguar” for a company that sells fast cars, “Allure” for a fashion magazine)

Arbitrary (registrable): Previously existing words that are used in an arbitrary manner are strong marks, and are registrable (“Apple” for a computer company, “Grey Goose” for vodka – there is no connection between the word and the company’s business)

Fanciful (registrable): Words that are completely made up are considered fanciful. These are the strongest types of marks because there is little to no risk that any other company has previously used the made up word in a commercial sense. (“Zynga” for online-based games, “Lululemon” for a clothing company)

 

– ck

Why Should I Register My Company Name and Logo as a Trademark?

While it is possible to establish rights in your logo or company name, enforcing those rights can be significantly more costly if your company name and logo do not have a federal registration.

Consider this: the legal costs connected with the registration of a mark that is “inherently distinctive” ranges approximately $1000 to $5000, depending on the law firm and their billing rates. On the other hand, if your company is being taken advantage of by a competitor using your mark, enforcing your rights without a federal registration can easily cost you $5000-$10,000 in legal costs – just to initiate the action.

In addition to the benefits listed by the United States Patent and Trademark Office, going through the federal registration process early in your business planning offers the added benefit of determining the commercial strength of your company name or logo. This could save your company time and trouble if you picked a company name or logo which will ultimately be challenged by a competitor, against costing your company thousands of dollars in legal costs (to  fight off a challenge) or in rebranding costs (if you decide to cease using the challenged company name and logo).

A quality attorney will initially take the time to conduct a search for possible oppositions against the company name or logo you wish to register. If the search reveals obvious problems, your attorney should advise you to whether to alter your mark, or to re-conceptualize the mark altogether. If it is unclear as to whether there are potential problems, you may be recommended to request a thorough search by a professional research company to better assess the likelihood of your mark being successfully registered (approx. $900). If your mark is considered “inherently distinctive,” then the trademark application process will be filed.

The USPTO will assign an examiner to review your application, typically within 3 months of filing. If they disapprove the application, they will issue the reasons for denial in a letter to your attorney. Your attorney may then advise you as to whether or not to appeal the decision. If the examiner approves your application, your mark will be published for 30 days, allowing for any person or business to oppose registration of your mark if they have a valid reason. If no challenges are brought, then registration will likely follow the publication.

I hope this has been a helpful article. Please feel free to contact The Law Office of Cliff Kuehn if you have any questions or concerns regarding your company name and/or logo.

– ck

A Case Analysis: The Uniform Domain Name Dispute Resolution Policy

A recently issued decision by the National Arbitration Forum reinforces the importance of ensuring UDRP complaints are fundamentally sound. In PrintingForLess.com, Inc. v. Intech Printing, FA366693 (Nat. Arb. Forum May 7, 2011), complainant PrintingForLess.com, Inc. filed an action against respondent Intech Printing for the transfer of the domain name bestprintingforless.com, and Intech Printing failed to respond. Both parties were engaged in online commercial printing services and located in the United States.

Facts of the Case

Complainant PrintingForLess.com began their online printing operation in 1999, applied for trademark registrations for several variations of “PrintingForLess” in the United States in 2003, and had registrations granted to them in 2005. Respondent Intech Printing registeredbestprintingforless.com in 2004, approximately five years after PrintingForLess.com registered their domain printingforless.com. Users who entered bestprintingforless.com would find an offering of services substantially similar to the services offered on printingforless.com.After the deadline for a response to be filed by Intech Printing expired, the Panel assigned to the case proceeded to hear the complaint pursuant to the UDRP. The relevant rules instruct Panels overseeing domain name disputes to proceed with a case on the basis of the complainant’s undisputedallegations, so long as those allegations and inferences from those allegations are reasonable and there is no contradictory evidence. These rules apply equally to cases where no response is filed.

A Notably Detailed Analysis of a Case, Despite the Absence of an Answer

The facts were quite clear in satisfying the elements of a UDRP dispute. The Panel found 1) the disputed domain name to be confusingly similar to the registered trademark “printingforless.com”, 2)that Intech Printing had no legitimate interests in the disputed domain, and 3) that Intech Printing registered and used the disputed domain in bad faith.What is notable about this UDRP decision is the level of detail used by the Panel in analyzing each element in a dispute with no response. This is especially so when compared to a default occurring at a state or federal court of the United States. In fact, on the second element, the Panel gave a full analysis of the allegations made by PrintingForLess.com, despite the fact that the Panel could have ruled the element as satisfied at the end of the first paragraph of the discussion. The Panel cited a case holding that the mere filing of a complaint constitutes the establishment of a prima facie case,and instead of concluding the discussion at this point, the Panel continued the discussion for two more paragraphs regarding the second element. This attention to detail leaves the gates of possibility wide open for an improperly pleaded UDRP complaint to be ineffectual in securing a domain transfer, even in UDRP disputes with no response.The importance of properly pleading the elements of a case cannot be over emphasized. Under the UDRP, panelists must still analyze the complaint before granting a domain transfer in a UDRP dispute with no response. The internet community seems to place a level of importance to this process, in light of the criticism the Czech Arbitration Court received on their proposal to offer an expedited UDRP process where no response was filed.(http://www.adr.eu/arbitration_platform/news.php). Considering the outcome for a default is a transfer of the domain name, this adherence to a strict analysis of a UDRP complaint in cases without a response is understandable. The lesson here is completeness: make it easy for the UDRP Panel hearing your case to decide in your favor. UDRP Panels are paying attention to your pleadings, even if the respondent fails to answer.

Mixed Results? UDRP Proceedings Versus a United States Trademark Infringement Action

To compare PrintingForLess.com’s decision to file a UDRP complaint with their other option, filing a complaint in a United States Federal court, one can see why the former was the choice. A simple answer is cost: UDRP disputes in the National Arbitration Forum or WIPO have a fee range of $1300- $4000 plus legal costs, which are also relatively contained due to the expediency with which UDRP cases are resolved. Alternatively, legal fees associated with just the filing of a complaint for federal trademark infringement may already reach the cost of a completed UDRP proceeding, and provides no guarantee of finality.The standard in a federal court in the United States is whether there is a “likelihood of confusion”between the two marks. A federal court would analyze whether Intech Printing’s registration and use of bestprintingforless.com was a commercial use of PrintingForLess.com’s trademark that was likely to cause consumer confusion as to the source of those goods or as to the sponsorship or approval of such goods. The legal test for this can involve the analysis of as many as seven factors! This easily translates into higher legal fees.There are many similarities within the legal authority guiding UDRP disputes and US trademark infringement suits. For example, U.S. common law also holds that the addition of a single modifier toa trademark will not shield a defendant from an infringement claim. This is essentially identical to UDRP precedent which has established that “the addition of a single, generic term to a complainant’smark is not sufficient to render the domain name distinct from the mark.”One difference in UDRP disputes and U.S. trademark law is the applicability of laches, an equitable defense applied when a plaintiff is found to have “slept on his rights.” Laches is a formidable defense under U.S. trademark law, whereas laches has had limited and sporadic results in UDRP proceedings.In the case at hand, Intech Printing may have had a good argument in a federal court in the U.S. for a laches defense due to the seven years which passed between Intech Printing’s registration of the disputed domain and PrintingForLess.com’s filing of an action. In the United States, delays in bringing an action of three years and eight months have been held to be sufficient for establishing a laches defense. Teledyne Technologies, Inc. v. Western Skyways, Inc., 78 U.S.P.Q.2d 1203 (TTAB2006).

For PrintingForLess.com, filing a UDRP dispute might not just have been a cost-cutting measure, but also a strategic one as well.

– ck

Is Someone Preventing You from Using Your Business Name as a Domain Name?

You have started a great business that is beginning to look profitable, using a business name in marketing that you developed from the outset of your venture. As a logical next step, you hire a web designer to make you a website, who quickly reports to you that http://www.[YOUR BUSINESS NAME].com is occupied. Worse, the website is not being used for anything, and the person holding your domain name wants $15,000.00 to transfer the domain to you. This is all in a day’s work for you.

Cyber-squatting can be an inconvenience for a business when they are looking to establish a domain name, but there are ways to strategically plan your marketing, with minimal effort, to avoid ever dealing with a cyber-squatter. Even if it is unavoidable, the law provides relatively simple processes for business owners to resolve domain name disputes.

When deciding on a business name, be sure to always run a few preliminary checks for other companies who might already be using your proposed name: search California’s Secretary of State website for corporations and LLC’s with the same name, search the US Patent and Trademark Office website for registered trademarks that are similar to your business name, and run a few Google searches of your proposed name to see if there are any other businesses in your field with a similar name.

If you have already been operating your business for some time, and have invested significant time and/or money in your business name, then you may want to consider purchasing the domain name from the “cyber-squatter” if the asking price is relatively low. If they are asking for an amount you think is unreasonable, you can consider filing a dispute against the domain holder with the World Intellectual Property Organization (WIPO).  WIPO administers a set of rules around domain name disputes called the Uniform Domain Name Dispute Resolution (UDRP). The purpose of the UDRP is to provide business owners with a claim against a cyber-squatter a quick and inexpensive means for determining who may rightfully own a domain name.

The UDRP resolves one issue only, ownership of the domain, and Panelists make a final decision on whether the domain must be transferred. A dispute filed under UDRP takes approximately 2 months to resolve after a complaint has been filed, and the WIPO fees range from $1500 (1-5 domain names and 1 Panelist) to $4000 (1-5 domain names and 3 Panelists).

Weigh your investment in your business or brand name against the potential cost of not being able to use the name as a domain. There are options available.

– ck