What is trademark law and why is it important for businesses? I’m a trademark attorney here to answer any of your questions. Ask me anything!

Okay, fast forward to January 1, 2024. The first 3 Mickey Mouse cartoons are in the public domain. But Mickey remains a (heavily!) trademarked character.

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What CAN and CAN'T someone do with the Mickey Mouse copyright that doesn't violate Disney trademark?

Mickey Mouse is actually a Copyright, and Disney hires gobs and gobs of lawyers and lobbyists every ten years or so that the Copyright statute comes up for them, so that they can get the Copyright term extended. At first, I think it was only for "the life of the author plus 30 years" and then they extended it to 40 years, then 50, 60, 70, I think they're around 80 years, now.

I don't see Mickey entering the public domain really anytime soon.

The Disney TM (the mickey logo and Disney name) will remain in perpetuity, so long as Disney keeps up with their filings (which I'm sure they'll do) and remain a company that Netflix doesn't buyout ;-)

Follow-up question: How can Disney force the entire US law to be changed just to benefit their own characters? Why can't, for example, Disney renew their copyright on just Mickey Mouse and related Disney productions without changing the entire US law, so that Disney still has their copyright but some other material produced the same year by another company can go in the public domain if not renewed?

I hope this makes sense - my understanding was that Disney effectively lobbied to change the law for everyone rather than only renewing their own copyrights.

Because it wouldn't be fair for one company to get special treatment. So the only way for Disney to change that is to change the copyright on everything.

yes, exactly, Disney just hires lobbyists who talk to Congress members and get them to change the law for everyone

Let’s say they don’t do their filings. Are you telling me that it would be possible to buy their trademark and make them pay me a lot of money to get it back? Doubt it will ever happen but stranger things have and I was wondering if it was possible

I mean, technically yes, but I'd say it's more likely that the world is flat than Disney is to miss their filings

My understanding is Disney has already faced some public domain issues on some properties and basically The Mouse lawyered up enough to extend the trademark so it isn't in public domain.

Prrrretty much

What do you think about a parody circumventing a trademark such as with Nathan Fielder's "Dumb Starbucks" stunt. Would that have really worked if he opened franchises?

I hadn't heard of Nathan's stunt until today, but nicely done Mr. Fielder! There's protection for "parody" in IP law in general, but parodies of things and comedic value gets real iffy when you start to make money off of it--that starts to look like real competition. So, if Fielder actually opened up a shop that used "Starbucks" in the name that actually sold coffee and whatnot, for money, that'd be that coffee-shop's profiting off of Starbucks Corp's actual IP, which is infringement. I don't think Starbucks wanted the bad press for "not being cool enough to take a joke," but the more Fielder did that, the more of a case Starbucks would have against him, and at some point, the law would require Starbucks to sue him, so as to "police their mark," (see response above about the guy with the parents in PA and the GA infringer)

Are trademarks case sensitive?

How about spelling?

Great Q! Typically they are not case sensitive, no. However, TMs are different for a brand's name (say "Nike") and it's Logo (the swoosh that may also have "nike" written in the logo). In the case of a logo, case sensitive or not does have some legal significance, albeit not a lot, just because a logo is a DESIGN, like an IMAGE, and a word-trademark/brand name is just that, a word.

And yes, the spelling does matter, but you can't skirt the laws by trademarking Nike spelled "Nighkee" for example, since the "overall impression of the TM on common peeps would be the same"

BRB, trademarking G00gle

DO IT!

As in many things in law - it depends. Trademarks can be registered as word marks/standard character marks, which are not case sensitive or otherwise style dependent, or design marks, which--as I understand it--are. Think of designs like the Nike swoosh or a stylized BP for British Petroleum.

Edited to add: Not OP; I am an IP attorney but trademarks are not my primary focus; Regardless I am NOT your attorney and this is not legal advice.

It's odd that we attorneys all go-to Nike as an example, was that like a law school fact-case all the time or something? Hrmmm

My parents have owned their own business for the last 15 years in PA. We’ve filed within the last few months, but have not heard anything back about trademarking the name of our business, something we should’ve done sooner but didn’t. It’s still awaiting examination.

We received word of a company opening in January 2020 with a similar name to ours (they use the first two words in our company name, and not the 3rd). We found out from a customer of ours that relocated to GA, thinking that we opened a store there and was disappointed in product. This person’s website address is the same as ours, but with a hyphen.

Would we have grounds to send a C&D even if we haven’t received approval for our trademark yet?

We believe that this person has to know that we exist due to the website address situation. She also doesn’t seem to have filed a trademark application which may be in our favor?

Edit to add: both our company and the company in GA sell the same type of confectionary goods.

Wow! Let's talk! I'm actually in GA, so I could sue them for your folks! My website is www.SparksLawPractice.com

It's typical for an application with the USPTO to take 6+ months, and especially since COVID hit--USPTO staff is SLOOOOOOOWWW, so I wouldn't worry about that.

Yes, we can definitely send a C&D letter, and in fact, your parents are basically legally required to send such a letter to show that they're "enforcing their trademark rights / actively policing the mark."

Have you seen those commercials that are all "patent pending" at the end of it? It's the same thing for "Trademark pending." So, yes, we can send a C&D letter even though you haven't yet successfully registered it. My office number is 470-268-5234, HMU and we can discuss when I'm done with this whole AMA type deal

Oooh thank you! I’ll forward your information to them— not sure if they’ll take up the offer to talk or not, but this is really good to know.

I’m just concerned that the longer we wait to send a C&D, the more likely we are to run into confused customers who don’t get the product they’re expecting if they accidentally order from one of us, thinking that they’re the other. Plus with the reports that her product is not up to par with ours, I’d like to really see us avoiding the confusion. So glad to know that we can send a C&D without having to wait. I’ll have to really put pressure on my parents to get this dealt with.

It also bugs me that the owner claims on her website that she’s the “creator of the xx brand”.... but that’s a personal gripe LOL.

I'd be PISSED! We can draft and send a C&D letter next week, just have them call us! 470-268-5234

Wow, great Qs! Imma hop on all these here, now (pops fingers 😂👍)

Do you see any downsides to the way the trademark and copyright systems are set up? To businesses, individuals, and/or innovation/creativity in general?

Man, interesting idea, I like it! This gets to the philosophy and structure of the legal aspect of our society! The philosophical undergrad in me eats this type of thing up... let me get to other legal Qs and then I can get crazy with this one (hopefully)

While I'm here, I think the Patent system that we have in place really really really needs reform, it's got some oddball rules and a lot of tech peeps are avoiding them altogether b/c Google and Apple have ridiculously broad ones that stifles new creativity... I think TMs and Copyrights are more on the OK side, for society

A little bit different, but what’s the deal with life rights? How is it possible to have stuff that happened to you be intellectual property? How strictly is it enforced?

So, "life rights" I'm assuming you mean the rights to someone's image/voice/persona, or IP (intellectual property) they've created during their lives. If that's the case, then rights to those copyrights are protectable, and can be sold. We'll get into this more with the Q, below, on Disney, but other people (now deceased) created that IP, and the IP is salable and transferable (just like buying a car), regardless of the fact that that person's now deadzo. So, basically, there's not a big difference at all with "life rights." I think it was Bette Midler that had this famous case against a car company that hired a singer that could fake Bette Midler's voice (it was astounding, deep-fakes before we had the tech!) and Bette successfully won against them (in the millions) for utilizing her image/voice/persona without paying her a licensing fee.

I think they mean life story rights.

Yeah sorry that’s what I meant thanks

Life story rights are basically copyrights that can be used for things like books and movies. The "movie rights" can be bought and sold, just like I mentioned above

I am in the process of starting a company in which I will primarily be selling hot sauces and BBQ dry rubs. In what ways might i need to use trademarks to protect my company name, product names, logos, etc. Is it really necessary for a small startup like me to go through the process early on, or can it be postponed until some growth in business occurs?

Congrats! I love BBQ! Okay, so you've got a cost-benefit thing here that you'll need to weigh for yourself. I'd say you should absolutely trademark the name, today, and hold off on the logos, catch phrases, names of particular BBQ sauces, etc., until your cash flow allows better. Call our office and I can walk you through it, this is about a 15 minute conversation and my typing fingers are struggling, LOL 470-268-5234

Are there any interesting ways that copyright law, trademark law, and patent law intersect or contradict with each other? For example, is it possible for a fictional character to fall into the public domain, but the name of the franchise and the franchise logo to remain trademarked?

That's interesting, hadn't thought of that! That should be possible because each of those are treated differently and have different protections. Copyrights are at something like "the life of the author plus 80 years" (might be more now, Disney always re-ups it when the deadline comes, lobbyist powzah!) but patents are usually only for around 20 years, or less, and TMs work differently from the other 2 as well. So, yes, a copyrighted character in a patented board game, let's say, may remain protected as the copyrighted character but the patent for the board game would laps after a couple decades and then someone could make a very similar board game with different characters.

If I paint the Disney logo (or any logo) and it’s my own creation, can I sell it on Etsy? Does it have to be noticeably different?

You can totes create whatever you want, but you cannot "sell it" anywhere or on any platform, legally anyway. I mean, Disney might not sue you over a $300 Etsy sale, but they 'd be within their rights.

It gets interesting if you made a sort of parody/social commentary work of art that utilized the Disney logo, and sold that, as a work of art. That'd probably be okay to do, because artwork like that is protected (see other response about Fielder's Starbucks thing)

i Work for a Record Label / Music Publisher , we have yet to Copyright our work through the copyright.gov website, my question is , is copyrighting the compositions that important as well? we already have the composer/writer's signatures on the split sheets outlining the percentages.

if we have the split sheets with the sound recording/Composition language in one document how do we copyright both? or should we treat both separately and re do each document and file them seperate ?

definitely definitely copyright stuff, all of it, and file new ones as you finalize the tracks. I used to be in the music business, too, before law school, and this is crucial. You can copyright a set of "works" with around 15 scratch tracks on them, as you're writing them (I still do this), and then as you made edits to the lyrics or beats or whatev, you file a new copyright.

To your Q, no that's not nearly as good for you as filing an actual copyright. Copyrights don't cost much, it's like $50 per filing, and again, you can do a bunch at once

How do you feel about software patents?

groggy, very groggy ;-) I wrote a blog post about this when I first started my firm. My issue with it is that software and tech in general changes and adapts, advances, etc. FAR faster than the patent-legal system can/does. Patent law just can't possible keep up with its current structure. Maybe if we funded the USPTO with like 5x the staff and passed a bunch of laws through Congress, but right now, I vomit a little bit when I hear about it

https://sparkslawpractice.com/blog/breaking-news-a-horde-of-patent-troll-killers-go-to-washington/

What if someone else files a trademark on something you can prove you were using first but didn't TM?

You'd then have the "primary/original" TM rights to it. These are usually "common law rights" though, and not USPTO rights, so you'd need to hire a lawyer to try and cancel their mark, or at worst have the other side do a concurrent use with you that allows you to continue to use the mark in the geographic region(s) you were in before they were. Usually, the USPTO awards the entire US region and territories for the one that files first, but if they knew or should have known about your mark, you can sometimes get their mark cancelled altogether.

If I would sell products (e.g. posters) based on/inspired by copyrighted art/designs/models/ideas (e.g. characters from a show) without using any copyrighted material (e.g. my own art), could the copyright holder sue me or force me to cease my operations?

Yes, because you're "selling stuff," making money off of their copyrights, and you're not doing it as a parody/social commentary. That said, they're usually pretty nice about it (unless they're Getty Images!) and normally you can just shutdown and pay them a small fee (if any) and just stop and be okay.

Can commerical publishers choose to coexist with fan-art and fan-fiction, or does the doctrine of acquiescence force businesses to sue their biggest fans and influencers?

Great question! It's really up to the publishers and how they'd like to handle it. But it's typically best for all sides for everyone to come to some sort of agreement, even if that agreement is to co-exist for awhile. Otherwise, the fan art undermines the IP of the publisher that they know and love so much, and the owner is pitted against their fans, somewhat.

This is kind of similar to property law, where you have "squatters." If a person lives on a piece of land for like 20 years, they can claim ownership to that land with squatters rights. This is all stopped immediately though if the landowner either (a) says, "hey, I see you boo! That's my land you're living on, and I'm cool with you living on it, just so long as you know that it's my land and not your land!" or (b) evicts them.

Any advice on getting into trademark law practice as a graduating law student with no science background? Many jobs seem to want somebody who can become a patent agent

Missa, TM law's a fun gig. I was a philosophy and music composition major, so we're in the same boat! My advice would be to just do what you enjoy--the law can get pretty grindy at times, so if you enjoy it most of the time, you can pull 60 hour weeks :-)

How would you recommend going about getting concurrent use rights with an owner of a mark that is similar to yours?

We actually have written a lot of concurrent use contracts at my law firm. Best way is to (a) speak with a lawyer like me, then depending on the advice you get, (b) have someone approach the other owner of the mark with an offer for concurrent use, or go ahead and file to cancel their mark with the USPTO.

Alright I have one, do people ever file for old trademarks from company’s that were bankrupted and if they made a resurgence would they have to buy the trademarks back from those said people?

Yes, totes mcgoats, in fact we've done that for some of our clients recently. Since that firm "abandoned" the trademark, their IP rights are no longer a thing, so there's no need to go to them and buy out their rights, they're just "yours for the taking". You can do special USPTO filings for this

So basically if the Washington Redskins trademark is abandoned you can technically buy and own it?

Yeoup, but I kind of doubt they've abandoned it just yet, PR pending and all

Do you have a strong opinion either way regarding Iancu v. Brunetti, on either policy or legal grounds?

So, I believe this case has to do with registering TMs that have names/words/images that will offend some people. This particular one was for the skateboard mark "FUCT". As a skater-kid of the 90s, I disagree with SCOTUS's holding and think there should be protection for (even potentially offensive) marks. I think TMs work the same way--there's name recognition whether it's an offensive mark or Martha Steward, I mean even Martha was a white collar criminal! Like, what gives??? But yes, for society, de-regulation on trade and such, I disagree with the way this one went down

Can I use a trademarked slogan, catch phrase, or hashtag in the caption of a personal social media post?

You can trademark your own slogans and catch phrases (not sure if that was your Q). We have successfully registered hashtags as well, but it takes some extra lawyering b/c the USPTO doesn't believe hashtags are really a trademark able "thing."

You can definitely use other people's hashtags on social media--that's just a link to other stuff, which the law has pretty much established does not constitute infringement

Hi , thanks for doing this. My question would be... Where is the line drawn between infringement and parody when it comes to artwork and marketing?

My pleasure! The "line," if you can even call it that is VAGUE, and really what lawyers get paid to argue back and forth. It's a "reasonable standard," I believe, so "would a reasonable person see it as artwork/parody, or would they be confused and think it was the source of the products/services?" If it's the latter, then it's infringement

When a trademark is pending, do I possess any temporary rights to the IP or is it still publicly available until a trademark is established?

Yes, you definitely have rights, both Common Law rights and rights from the USPTO that are retroactive if you get the TM awarded

I had a store that was called "Yes, Sir!" One of my suppliers opened up a store down the street selling exactly the same merchandise, and it was called "Yes, Ma'am!" (Obviously, those weren't the real names, but I'm trying to show how similar they were.)

I never trademarked or did anything legal to officially claim my name, because I never imagined I needed to. I had people calling me thinking they got something from me, when it was really from them, so the name similarity definitely hurt my business. Plus, since the owner was also a wholesale supplier, he sold everything at barely above cost to undercut me. As soon as he put me out of business, of course, his prices went up to normal retail level.

People told me I shouldn't bother suing because I didn't have a case, and even if I did, he'd just change his name and the damage was done.

In your experience, do you think it would have been worth pursuing legal remedies?

Yes, I'd have definitely sued, especially if you had a registered trademark for your brand name.

Is the photo related?

What, my AMA proof photo? I mean, no except that I have great test and a fantastic bar!

It is a good photo.

😂😂😂👍

I read a long time ago that a “poor mans patent” can be as simple as putting your idea or whatever it is you want to protect in a package/envelope and mail it to yourself and leave it unopened. That way it’ll have a postmark on it for the date. If it’s ever challenged in court you can use that as proof of when you originated the idea.

Is there any truth to that or is that like an urban myth?

Not really anymore, b/c it's pretty easy to fake a "closed/sealed" envelope, and most filings are done online these days

Do you have any opinions of the Lanham Act and recent cases involving disparaging trademarks? It seems like anything is fair game now with recent Supreme Court rulings. How should the Lanham Act be interpreted? How offensive can a trademark be?

We discussed this a bit with the "FUCT" TM. I, myself, am okay with marks that may offend some people, because allowing some protection helps our economy. I guess I value the economy over risking offending people (to an extent). The Lanham Act, itself, has a ton of case law and various interpretations through the years, in various jurisdictions, and I'd need to refresh myself on it to really get you an answer

Are there any brand names or situations that are essentially impossible to protect using trademark law for whatever reason (too generic, too abstract, is based in a country that does not recognize trademark law, etc...)?

yes absolutely, and for good reason. You can't get a trademark for something like "Laundromat," b/c otherwise you'd be allowed to prevent anyone in the US from ever using the term "Laundromat" or even a similar term like "laundry." If you filed for a mark like "Bodacious Laundromat" you'd have to have the attorney filing it "disclaim" the term "Laundromat" since the only really trademark able portion of the mark is the word "Bodacious"

www.SparksLawPractice.com

If you had to pick an ip lawyer for a small research firm what would your criteria be?

Not all lawyers are created equally--just like not all doctors are good/bad. And, lawyers specialize in various legal industries (IP being one of them). I've seen people hire the wrong lawyer for an IP case before and it was horrifying.

I'd definitely suggest getting a lawyer or legal team that's got experience in TM and IP law, and in the industry you're researching (tech, entertainment, construction, etc.). For me, it's important that you vibe well with the attorney, too--that you can talk the same language and the lawyer understands what you're looking to achieve.

Oh, an get a solid scope of work and cost schedule done first, too, so you don't have a big disagreement over it later :-/

I'm about to receive a trademark for my company/website name. Can I send out cease and desists to enforce it or does that have to be done by a lawyer?

You can send it yourself, but it won't be nearly as "toothy" as it would be coming from a law firm

Can I really use any font I want for commercial use in print on demand? From what I read, the typeface isn't copyrighted/trademarked or whatever and its the actual font that you need a license to use, in say an app you made etc.

So the short answer is "Yes," so long as it's a Word mark. If you get a trademark registration for a logo, however, the typeface/font used for the logo has to remain the same--otherwise you're degrading the strength of your TM

www.SparksLawPractice.com

It's been a fun hour, thanks for all these great questions! If you still have questions or just want more info about trademark law check out my site https://sparkslawpractice.com/georgia-intellectual-property-lawyer/.

Are there trademark trolls like there are patent trolls?

Oh God yes, dealing with some this week actually (facepalms himself)

How would trademark and copyright laws apply to a 501c3 animal rescue???

TM and Copyright laws apply the same to 501 companies as they do to for-profit companies :-)

Can I use 10 second (or less) video clips in my sons youtube stream?

Like when he wins he presses a button and it plays a green screened gif of Jack Black doing the floss.

Or when he gets a new viewer he plays a 3 second clip of Obi Wan Kenobi saying "hello there".

Just want to know if that would be a sort of satirical use and be protected.

So far no copyright strikes on his channel from the memes, only from fortnite and him doing the Rick Astley "never gonna" dance or the drake "toosie slide" dance. Those have gotten a strike/claim from the respective artists label.

Memes are in the vague area of the law. Technically, it's copyrighted work, so technically you'd be infringing (even if only for 10 seconds or less), but billions of people have used memes and thereby infringed, and there's a problem with enforcement (it'd be cost prohibitive for owners of those copyrights to sue for infringement). The automated takedowns from companies nowadays reduces the costs somewhat for copyright owners, but it's still very much an issue. I'd say tread very lightly, and know that any use of copyrighted materials is a risk--whether you are risk-averse or not is your prerogative :-)