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 In "Trademark"
[In honor of Super Bowl XLVII — because everyone knows that Roman numerals make everything very distinguished and significant — we’re bringing back one of our most-read, and most personally-favored posts. Enjoy your SUPER BOWL PARTY, everyone.]
Unless you live here, I’m assuming you’re aware of a little football game taking place this weekend between the San Francisco 49ers and the Baltimore Ravens. (And maybe, just maybe, you might have heard something — but probably nothing original — about that whole Harbowl storyline. Well here’s a little-known wrinkle about it.)
I’m as excited as anyone for the game, which is why, this Sunday, I might try to find a local bar hosting a Super Bowl party. But I’ll probably be out of luck, unless I’m willing to go to a “Big Game” party instead. And if I’m feeling spendthrift — the always-confusing word that sounds like “thrifty” but actually means “profligate” — I might try to pick up a new flat-screen TV at a Super Bowl sale. But unless I’m willing to settle for one of those ubiquitous “Big Game” sales, I’ll probably be forced to stick with what I’ve got.
Every year, while every sports yak in America is obsessing over Super Bowl scouting reports, every business in America is trying to capitalize on the game. But most of them aren’t using the words “Super Bowl” to do so, and the reason is fairly obvious: the phrase “Super Bowl” is trademarked by the NFL, which is famously protective of its intellectual property. Moreover, the privilege of using the phrase “Super Bowl” in advertising is one of the valuable rights bestowed by the NFL upon its advertisers and promotional partners — which gives the NFL extra incentive to keep freeloaders from poaching the phrase (thereby diminishing its value to potential paying promotional partners).
But what if the NFL is wrong? What if I really could check out the Super Bowl party at my favorite watering hole without them being subjected to the threat of legal doom?
Guess what, folks: I can.
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.
Many people consult with psychics. Not an unusual thing to do (certainly not in California). But not a lot of people spend the next 38 years adding rooms to their houses because the soothsayer said spirits would kill them if construction ever stopped. At least one person is reported to have done so: Sarah Winchester, the widow of the son of the famed gunmaker. By the time the heiress died in 1922 at age 82, her seven-room farmhouse had become a seven-story, 160-room Victorian-style mansion, replete with winding dead-end passageways, interior windows, and doors to nowhere.
These types of legends make good movies, which is why a production company approached the owner of the Winchester Mystery House in San Jose, California, to request permission to film there. The owner turned it down, stating that another company had already acquired the rights to the Winchester story. The filmmakers went ahead and made their movie anyway, calling it Haunting of Winchester House and putting a Victorian-style mansion on the DVD cover. You can guess what happened next.
The case that followed, Winchester Mystery House, LLC v. Global Asylum, Inc., represents a classic battle seen frequently in the world of entertainment litigation: the trademark owner who wishes to preserve his exclusive rights to a particular name vs. the artist who wishes to use that name as part of a creative work. And the battleground? The First Amendment, of course. So what happens when the owners of one of America’s most famous haunted houses take on the filmmakers who have gone renegade to tell its (highly fictionalized) story?
We here at Law Law Land are big fans of Halloween, the
drunkest, sluttiest, most creative and fun-loving holiday of the year. Law Law Land HQ itself is awash in cat ears and warlock coats today, and your editor is looking forward to a heaven-vs.-hell, angel-vs.-devil ping pong grudge match of epic proportions tonight. But if you’re looking for a real fright on Halloween night, just consider some of the following truly scary cases and claims.
If the Past Is Never Dead, Does That Mean the Past Is Undead?
William Faulkner famously wrote, “The past is never dead. It’s not even past.” Woody Allen-mouthpiece Owen Wilson less-famously said, in 2011’s Midnight in Paris, “The past is not dead! Actually, it’s not even past. You know who said that? Faulkner. And he was right. And I met him, too. I ran into him at a dinner party.” And Faulkner’s estate is now infamously saying that, if you use Faulkner’s line (ish) in a movie, with attribution, you have broken the law.
Faulkner’s estate is suing Sony Pictures Classics for copyright infringement and trademark infringement, claiming that Midnight in Paris’s misquote of Faulkner’s famous aphorism from 1950’sRequiem for a Nun not only infringes their copyright, but also violates the federal trademark statute by deceiving viewers into believing that the movie was affiliated, endorsed, or authorized by the Faulkner estate. So are Sony’s lawyers running scared into the night? Not likely. But the distant howls you might be hearing are actually the pained wails of frustrated intellectual property law professors everywhere.
(Special kudos to the usually-dry-as-a-skeleton Courthouse News Service for observing, “at risk of offending the shade, or estate, of Charles Dickens: This is a far, far weirder thing than Sony has ever done.”)
Ben and Jerry’s Ice Cream has always been a company with a sense of humor. As Ben & Jerry’s spokesman Sean Greenwood says, “We just do fun.” With flavors like “Chubby Hubby,” “Cherry Garcia,” “Phish Food,” and “Imagine Whirled Peace,” who could disagree? At times, the company has even been accused of having a little too much fun. Some of its racier-named flavors include “Karamel Sutra,” and, of course, the controversial “Schweddy Balls.” The latter flavor was inspired by an Alec Baldwin SNL skit and opposed by groups like One Million Moms, which said, “[t]he vulgar new flavor has turned something as innocent as ice cream into something repulsive.”
Perhaps attracted to the scent of something innocent and pure being defiled, a North Hollywood pornographer called “Caballero Video,” recently released some stomach-churning titles under the moniker, “Ben & Cherry’s.” The pornographer’s lascivious exploits include: Harry Garcia (Cherry Garcia); Boston Cream Thigh (Boston Cream Pie); Chocolate Fudge Babes (Chocolate Fudge Brownie); New York Super Fat & Chunky (New York Super Fudge Chunk); and Peanut Butter D-Cups (Peanut Butter Cup). The complete list of saucy titles (including those too racy for even this blog to reprint) is available in this court order. And of course, pictures of the films’ bawdy packaging that couples the traditional pastoral Ben & Jerry’s theme with NSFW pictures are available for those who “have learned to work the Google on the Internet machine.” (Note: That link points to the IMDB page for Blades of Glory, not pornography. What kind of blog do you think this is?)
Now, Ben & Jerry’s has filed suit in New York federal court against Caballero Video, alleging federal trademark dilution, federal trade dress dilution, federal trademark infringement, federal trade dress infringement, federal unfair competition, common law unfair competition, dilution and injury to business reputation, and deceptive trade practices. The Court has already issued a temporary restraining order, ordering Caballero Video to stop offering the 10 allegedly infringing titles, remove all online mention of the X-rated films, and stop using the trademarked Ben & Jerry’s packaging — at least until a final decision is rendered in the case.
But did the Court err in issuing the temporary restraining order?