Much of the independent video game world is up in arms regarding the recent news that large UK game developer King.com has “trademarked” the word CANDY. Many see this as an attempt by a Wonka-esque behemoth to grab control of a common word in order to crush its smaller competitors like some piece of common confectionary. While there may be some truth to that thought, as is often the case when legal issues get picked up by the blogosphere and even mass media, there are also many misperceptions clouding the debate. Because I feel that if I’m going to take a (short) break from playing CANDY CRUSH, I might as well write about it, I want to try to clear up some misconceptions.
Posts by Jesse Saivar
Why Skip Bayless Should Probably Focus on the Super Bowl and Shut Up About This Whole “Kaepernicking” Trademark Application
So last week, I was on my 173rd consecutive hour of consuming blog articles, news stories, tweets, posts, video interviews, transcripts of interviews, analyses of transcripts of interviews, and opinions on the analyses of transcripts of interviews about Manti Te’o and his imaginary dead girlfriend, when I noticed that something else critical happened in the world of sports. OMG OMG OMG! Did you hear that Colin Kaepernick, NFC champion quarterback of the San Francisco 49ers and flat-billed hat enthusiast, recently “trademarked” his signature, tattooed-biceps-kissing touchdown celebration now known as “Kaepernicking?”
Wait, WHAT?! Does this mean that when I finish this blog, Colin is telling me I can’t celebrate by jumping up from my desk and kissing my beautiful biceps? Have you seen my biceps? It’s hard for me to look down at them and not kiss them! It’s like I have Kate Beckinsale and Jessica Chastain staring up at me from each bicep, lips pursed, like some insane Popeye fever dream.
In my panic, I poured through the incomprehensibly large number of stories about this. But then I had a thought. No, not “What am I doing with my life?” No, not even “What is everyone at ESPN doing with their lives?” No, my thought was “Wait wait… I’m a lawyer, damn it! I actually know what all of this means! These guys don’t!”
What’s in a Trademark?
You see, there are times when being a lawyer is like being a sci-fi nerd. No, not just because girls flinch upon seeing us… Where a sci fi nerd may get mad that you don’t know that those cool big four-legged walky things in The Empire Strikes Back can be called either an Imperial Walker OR an AT-AT (short for All-Terrain Armored Transports, not to be confused with those cool little two-legged walky things in Return of the Jedi, which are called AT-STs, or All-Terrain Scout Transports…idiot), I often find myself peeved at laymen’s misunderstanding of intellectual property law. Someone will give someone a funny nickname at a party and follow it up with “you should totally copyright that!” And I’ll shout “Excuse me! According to U.S. copyright law, you can’t copyright a short phrase! In fact, judging by the context, I’m pretty sure you mean that you should ‘trademark’ that, but what does that even mean? You can’t actually ‘trademark’ something! You can file an application for registration with United States Patent and Trademark Office and assuming you specify the proper goods and services and submit a proper specimen of use and pay the requisite fees and don’t receive an office action from the USPTO Examining Attorney or an opposition from a third party, you may be issued a registration. But is that really what you want to go through for that stupid nickname?! Hey, wait a minute, where’s everyone going? Come back!” (See, there’s a reason I don’t get invited anywhere by anyone. Ever.)
Regardless (or “Irregardless” for you Raiders fans), listening to or reading a sports reporter’s take on trademark law is like Bill Walsh listening to me try to explain the complexities of the pistol formation. Here’s the thing: Colin Kaepernick is in no way going to be able to prevent you, me, Alex Smith, Ray Lewis, the Harbaugh Brothers, or any member of the Lingerie Football League’s Seattle Mist from kissing their biceps. In fact, as applied for, Colin’s application, if it eventually becomes a registration, will only prevent you from the following VERY limited activity: advertising and selling clothing making use of the word KAEPERNICKING as a brand. That’s it. Nothing more.
You see, Colin’s application only covered the word KAEPERNICKING, not the actual celebration. In addition, in his application, he’s only claiming the exclusive right to use that word in connection with clothing — following the recent trend of athletes attempting to secure their nicknames for clothing (see TEBOWING and LINSANITY). In fact, he actually applied for several other marks that didn’t get as much publicity: KAEPERNICK7, KAEPERNICK CK7, KAP7, KAP, and, creatively, COLIN KAEPERNICK.
As much as can be forcibly read into this story by the easily-excitable Skip Bayless (who just so happens to not only be a frat bro of mine, but we also attended the same sports powerhouse), it’s really not a big deal. Due to the fact that his “trademark” is just a version of his name, he likely wouldn’t need a registration to protect himself — he’s got right of publicity laws on his side. He probably filed the applications simply because it’s common for unscrupulous types to file trademark applications for terms associated with famous people as soon as those terms get hot: see BLUE IVY CARTER and LINSANITY. Having an application on hand will make it easier to shoo those imposters aside.
Will It Even Work?
Of course, as you may have noticed from my room-clearing screed above, just because Kaepernick applies for trademark protection doesn’t mean he’s going to get it. In fact, given the nature of the marks for which he’s claiming protection, Kaepernick and his lawyers are going to have a lot of e- paperwork in front of them.
- All of Colin’s applications for marks which include his last name (i.e. KAEPERNICKING, KAEPERNICK7, and KAEPERNICK CK7) are likely to be initially refused by the USPTO because the marks consist of a word that is “primarily merely a surname.” The USPTO will only allow a registration of a last name as a trademark if the applicant can prove “acquired distinctiveness,” indicating that the public now associates that surname with this particular applicant’s goods/services. Colin may be able to prove that due to his recent rocket flight to stardom.
- Colin’s application for COLIN KAEPERNICK is going to be initially refused by the USPTO because in order to acquire a registration for mark that identifies a particular living individual, the written consent of that individual must be on record. The USPTO doesn’t want someone’s name to be co-opted by some random third party. Colin will be able to easily overcome this refusal by submitting a short written statement showing his consent.
- Colin’s application for KAP will almost assuredly be rejected. While we may recognize that in this instance, KAP is a flawed attempt at shortening KAEPERNICK (shouldn’t it be KAEP?), the problem is that he’s trying to protect it in connection with clothing, which includes hats. “Cap” is a word used to generically describe hats and, under the law, no one can claim exclusive rights in a generic word. The fact that it’s misspelled doesn’t help things. For the purposes of analyzing the generic or descriptive nature of a word, a misspelling is treated the same as the proper spelling. I think Colin’s going to have much better luck against the Raven’s defense than he is on getting past this refusal.
But Let’s Focus on What’s Really Important
Brain-addling trademark law minutia aside, the point of this overly-angry and uninteresting missive is to convey the fact that trademark rights, at least in the U.S., are limited in scope. The main purpose is to allow someone to protect a word, logo or slogan (or, in more complex cases, a sound, shape, color or even smell) as it is used on particular goods or services offered by that person or company. The protection extends only to that particular word as used on those particular goods (except in limited circumstances). A trademark registration does not allow the trademark registrant to prevent anyone from ever using that word in a sentence ever again. It certainly doesn’t allow for the prevention of a certain unoriginal touchdown celebration (I miss the good ol’ days).
But you know, when it comes down to it, I really don’t care. I’m bitter. Not just because I’m a lawyerbut because I’m a long suffering San Diego Chargers fan. I LOVE the guy, but I don’t thinkRIVERSING is going to take off any time soon. At least I can now go back to what’s really important: the Manti Te’o story. I’m eagerly awaiting the day (coming soon) when we see a trademark application for the next big sports fad: TE’OING.
Q: For some 10 years now, I’ve been trying to penetrate the 10 foot thick wall called “unsolicited.” How do I get through it? I have no agent.
A: We can answer your question, but frankly, you may not like what we’re going to say. Unfortunately, that 10 foot thick wall is probably as old as the Great Wall of China and is equally as impenetrable. For those of you who haven’t had the pleasure of submitting a script to an individual, production company, studio or, god forbid, law firm only to have it returned to you with a letter classifying it as an “unsolicited submission,” we can give you a little background.
Q: I’m a writer/director. I wrote a script that’s getting some traction. I obviously want to sell it but on one condition: I have to direct the movie. I don’t think anyone else can do it justice… A producer just presented me with an option agreement. In our conversations, he agreed that I could be the director. In the option agreement, it says that in the event the project receives financing and if a few other conditions are met, I’ll be engaged to direct the film on a “pay or play” basis. I know that “pay or play” is a good thing so does this mean the producer is essentially agreeing that I’m the director?
A: When I first started practicing entertainment law, I believed the term “Pay or Play” referred to the next hot NBC primetime game show, which I assumed would be hosted by Gallagher. Fortunately for all of us, it’s not. However, I’ve found that while it is a very commonly used contract term, and everyone wants it in their agreements, there is (as evidenced by your question) some confusion about the full extent of its implications.
Q: A producer has offered to option my script. I’m just starting out so the numbers are pretty low (it’s a 12 month option for $1,000 with a purchase price of the WGA scale). I’m cool with that but have one problem with it: what happens if she turns around and sells the option to a studio for a lot of money? I think that’s what she plans to do.
A: Pat yourself on the back, my friend. You just spotted an issue that is often overlooked in standard option agreements. To answer this, let’s talk a little background.
I think it’s pretty clear that the legal world does not always jibe with the real world (and especially not The Real World: Cancun). Take capitalization for instance. In the real world, it doesn’t mean much. In fact, based on what I’ve seen on Twitter and in hip wedding invitations, I believe the “art” of capitalization has been completely lost by our society (and, of course, neither of our presidential candidates is brave enough to tackle the topic). In the bizarro world of the law, however, capitalization is a detail that can prove to be of paramount importance.
This was a lesson recently learned the hard way by King of All Media Howard Stern – if you consider losing a $300 million bonus the “hard way.”