October 30, 2009

Celebrity Trademark: Monopoly

monopolyThe 13th Monopoly World Championship was held this week in Las Vegas Nevada. Out of the 41 international contestants, Bjorn Halvard Knappskog, a 19 year old from Norway, emerged victorious. He won $20,580.00, which is the amount of rainbow colored currency in a Monopoly board game.

Monopoly is one of the most distributed board games in U.S. history, with more than 200 million games sold throughout the world. For the few who are unfamiliar with Monopoly, it is a real estate trading game. The goal of the game is to become the wealthiest player by buying property and charging other players rent when they land on it.

There is some dispute over the origin of the game’s concept. Some sources say it emerged from The Landlord’s Game, which was invented in 1904. Hasbro, the owner, maintains that Charles Darrow invented it during the Great Depression. He was initially rejected by Parker Brothers, now a Hasbro subsidiary, when he approached them with game proposal. The company finally acquired the rights to Monopoly after Darrow began building game sets by hand and selling them. Consumer demand for the game was convincing.

Darrow patented the “game of barter” in 1935, which is currently assigned to Parker Brothers. The Monopoly brand also received trademark protection in 1935.


August 28, 2009

Celebrity Trademarks: KB Toys

KBtoys.png KB Toys, longtime vendor of children’s toys, regrettably has filed for bankruptcy and is currently liquidating its assets in order to satisfy its creditors. Among the items up for bid were KB Toys trademark, logos, and domain name as the retailer is shutting down all of its approximately 460 stores.

For a business that began in the 1920s, they have only been using the name, "KB Toys" since 1996, according to their trademark registration, and "Kay-Bee Toys" since 1997, according to another trademark registration.

Those registrations cite a handful of other prior registrations. A trademark is any word, name, symbol, device, or any combination thereof used to identify and distinguish goods. One may last forever, but can expire due to either non-use or loss of distinctiveness. Ownership can arise due to either public use or registration, but registration affords many more advantages when it comes to deterring infringement.

Trademarks are assets. As such, these assets may be transferred or sold by executing an assignment. A retail operator called CE Stores secured the rights to KB Toys’ intellectual property for $2.1 million dollars and may capitalize on the good will that KB Toys built up since its inception in 1922.

It’s a shame that KB Toys has been forced into a situation where it has to part with the good will of its own intellectual property, isn't it?

August 17, 2009

Celebrity Trademarks: Twitter Trying to Trademark “Tweet” Before It’s Too Late

twitter_logo.png True story: I loved Twitter. Then I hated Twitter. And now I use it only to diversify my online social media portfolio. I mean, the micro-blogging site has even spawned new lingo in the English language! As I just used the term, an update posted on Twitter is referred to as a “tweet.”

Consequently, Twitter has submitted a trademark application to the U.S. Patent and Trademark Office for the word “tweet.” This process likely will turn into a race against the clock as “tweet” may become genericized before Twitter can fully establish its rights in the term.

A genericized trademark refers to one that has become so prevalent that it comprises the definition for a general class of product or service. Such a trademark no longer carries the specific connotation intended by the applicant but has developed into the generic description itself. Notable examples of genericized trademarks include "cellophane." Companies like Xerox take painstaking efforts to educate the public not to use the word as a verb ("Xerox this memo,") but rather, as an adjective ("Make a Xerox photocopy.")

What this means is that Twitter must actively take measures to inhibit broad usage of “tweet” or else it may effectively forfeit some of its rights in the word. One option is to formally notify users of proper trademark use. I would love to be part of the ad campaign that promotes phrases like, "Send me a tweet micro-blog." It is critical for trademark applicants to maintain the fine balance of popularizing their brands while concurrently preventing genericide so that they may retain their full intellectual property rights in their trademarks.

Are these rules nitpicky? Sure they are! But they all serve a purpose. Want to find out more? Send me a tweet!

August 3, 2009

Celebrity Trademarks: Jay Leno Boots Cybersquatter

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Jay Leno may be the predictable, humorless, lisping shadow of the much more talented, suave, and hilarious Conan O'Brien, but that's not the only thing our mega-chinned lackey was lacking. For five years, thejaylenoshow.com domain name did not belong to the veteran comedian and former Tonight Show host. Instead, it was occupied by one Guadalupe Zambrano in order to drum up interest in his real estate page. Fortunately, Jay Leno now has rightful possession of the web address after the World Intellectual Property Organization recently mandated that it be returned to him.

Cybersquatting refers to bad faith registration of a domain name so as to profit from someone else’s trademark. To add insult to injury, cybersquatters often attempt to extort money from the trademark holders by offering to sell the addresses back to them. The U.S. Antisquatting Consumer Protection Act was enacted to deter this type of exploitation. Misleading users in an effort to draw them to a particular site is banned by the Act.

The WIPO held that following a 30-year career, Leno had procured common law trademark rights to his name, and gave Zambrano a 10-day window to surrender the web address to Leno. A domain name represents one of the keys to widespread recognition, builds website traffic, and helps to create a natural association between a site and a person or entity.

I’m glad that the WIPO issued a decisive ruling and empowered trademark holders. People who have worked for years to build goodwill in their names deserve protection. Opportunistic cybersquatters should not be rewarded for their deceptive tactics! However, I don't know why this is the only registered trademark with Jay Leno's name. If you know, would you please pass it along to me?

July 6, 2009

Celebrity Trademarks: Michael Jackson, an Intellectual Property Goldmine?

thriller-michael-jackson.jpg The recently deceased superstar was known by many names: the King of Pop, M.J., Jack-o, and the list goes on. We also recognize him either as a dark-skinned cherub-faced child or a pale, middle-aged man with over-processed facial features. Why don't we also know him as an Intellectual Property Goldmine? Love him or hate him, the supremely talented character was a genius when it came to securing various forms of intellectual property during his long and decorated career as an artist and performer. Michael Jackson brilliantly relied on copyrights, trademarks, and even patents to protect his work, and was an avid collector of others' proprietary works.

Jackson registered his name with the U.S. Patent and Trademark Office and held a multitude of trademarks ranging from performances to merchandise to fan clubs. Even for a personality as distinctive as Jackson, trademarks played an important role in further distinguishing him from others.

Not only did Jackson guard his own work and attributes, he even acquired copyrights to other music. He owned a 50 percent stake of Sony/ATV, a joint venture which controls publishing rights to two hundred and fifty one Beatles songs. Jackson famously outbid Paul McCartney to purchase the song-copyright catalog in 1985. Today, Sony/ATV is estimated to be worth upwards of $1 billion dollars.

Amazingly, Michael Jackson even patented his very own invention, a method and means for creating an anti-gravity illusion. The patent features a shoe interfitting with a peg protruding from a stage and enables a wearer to lean forward at a 45 degree angle to the floor without falling. It certainly appears to be unprecedented for a musician to have obtained a patent himself.

Michael Jackson's memorial is this Tuesday, July 7, at 10am at the Staples Center in Los Angeles. Allegedly, the chances of getting struck by lightening are better than the chances to get tickets. Wanna try your luck anyway? Register here.

May 18, 2009

Celebrity Trademarks: Octomom

octoYou may be familiar with Octomom, the Florida woman who recently gave birth to octuplets, but have you heard of Octomom the brand? Nadya Suleman, "affectionately" nicknamed "Octomom" by the tabloid media, recently applied to the USPTO to register the nickname as a trademark for use with clothing and disposable diapers. The application presents some interesting issues.

Commentators say the term "Octomom" is probably capable of functioning as a trademark as long as it is used to identify a brand or a source of goods or services. Others contend that trademark examiners will think otherwise. The application includes a section stating the “mark identifies Nadya Suleman, whose consent(s) to register is made of record.” Such a statement may cause her mark to be perceived as identifying a person, rather than products or services.

In the same light, even if Suleman was to trademark her own name, surnames usually receive the same treatment as descriptive marks under trademark law. Therefore terms that include a name, “Jones Cosmetics” for example, are not protectable without a secondary meaning. Suleman has not established a secondary meaning for her name or nickname, because she has yet to use the term in commerce to identify clothing or disposable diapers. It is likely that the USPTO may require her to offer proof that the name has a reputation connected with the listed goods and not merely to her.

If you have considered obtaining a trademark for a brand that contains a name, contact an experienced trademark attorney for advice regarding secondary meaning requirements.

May 1, 2009

Celebrity Trademarks: Martin Luther King Jr. -- Is His Family Entitled to Fundraising Royalties?

king.jpgControversy surrounds a future Washington D.C. memorial dedicated to the late Dr. Martin Luther King Jr. The Martin Luther King Jr. National Memorial Project Foundation, a nonprofit organization, arranged the construction of the memorial and is paying for it through private fundraising efforts. The Foundation will transfer the memorial to the National Park Service upon completion. Dr. King’s descendants charged the Foundation nearly $800,000 in licensing fees for the use of his words and image in the fundraising materials.

In response to the royalties payments, critics have blasted the King family for “profiteering.” One professor even stated, “any family would be so thrilled to have their forefathers celebrated and memorialized in D.C. that it would never dawn on them to ask for a penny.”

Those criticizing the King Family fail to acknowledge they have a right of publicity. In the past, when commercial merchandisers or publishers used Dr. King’s words or image without permission, the Kings sued for their share of the income. The right of publicity is a common law doctrine, which allows an entity to charge royalties for, or prevent altogether, the commercial use of a protected name, likeness, or personality. Unlike copyrights or trademarks, the right of publicity does not expire after a certain number of years or death of the property holder. Rather, the right is descendible to the holder’s heirs and lasts as long as it is enforced.

To date, the King Family has not charged for the actual memorial because it only features public domain materials, which are not protected and can be used by anyone. The Foundation may be liable to the Kings for future fees, however, if it uses words or quotes that fall within the Family’s property rights. Some argue against this because the memorial will be given to the government, not a commercial entity. However, the King's should be permitted to charge at least a nominal fee in order to maintain their right of publicity.

January 21, 2009

Celebrity Trademarks: Dick Clark

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Around the world, all eyes would turn to Times Square in New York City on New Year's Eve. Millions would watch as Dick Clark entertained us, and finally counted down to the infamous dropping ball in the seconds before the new year arrived in the Big Apple.

He was born on November 30, 1929, but he alleges in a recent trademark registration that he has been using his name, "Dick Clark," since 1948 to "promote the goods and services of others by allowing sponsors to affiliate their goods and services with a television celebrity." (Reg. No. 3533080).

Dick Clark also holds the phrase, "Dick Clark's New Year's Rockin' Eve," to be his trademarks. He has one registration for the phrase's use in association with slot machines (Reg. No. 2688315). He also has a pending application for use of the phrase in conjunction with pre-recorded CDs, DVDs, and video tapes (Ser. No. 77612030).

Interestingly, his familiar sign-off catchphrase is not a registered trademark: "For now, Dick Clark. So long!"

November 24, 2008

Celebrity Trademarks: Michael Phelps, Filing Applications for Trademarks He Hasn't Yet Used In Commerce

Long after the last of the tourists left the Water Cube and the Bird's Nest in Beijing, and NBC is preparing to re-run that Saturday Night Live season premier, Michael Phelps has already been laying the groundwork for building his brand name: registering his name with the U.S. Patent & Trademark Office.
Michael didn't waste any time; he had two applications filed before the summer was over. Even if Michael "likes to do everything fast," he didn't have enough time to use his name to identify a whole host of clothing and athletic apparel. This raises the question: "Can I apply for trademark registration, even if I haven't used it yet to sell, market, or promote goods/services?" The answer is, "Yes," as long as you state that you intend to use the trademark to identify those goods and services in commerce.

I am a swimmer, and am a huge Michael Phelps fan. I'm even tagged to his site on Facebook. My advice to Michael is to pay close attention to all the items he is claiming his trademark will identify. For instance, his application states that he intends to use the trademark, "Michael Phelps" to sell ski shoes, non-disposable cloth training pants, and panties. If he later confirms his trademark identifies those products, when in fact he has not used "Michael Phelps" for that purpose, he could lose his rights as they pertain to that particular registration.

Any other rising stars out there intending to use a trademark, and wanting to file an application? Let me know!

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November 7, 2008

Celebrity Trademarks: Beyonce, a.k.a. Sasha Fierce

From my office in Jacksonville, Florida, to a corner store in Hawaii, you would be hard-pressed to find anyone in the 12-35 year old demographic who does not know Beyonce.

For all six of you who don't, here's a quick pop-culture review: a former member of the '90s R&B trio, "Destiny's Child," Beyonce released her first solo album in 2003. From there, her commercial appeal exploded. Her success as an entertainer includes:
- multiple movie roles, one of which earned her a Golden Globe nomination for her role on the big-screen adaptation of the Broadway hit, "Dreamgirls;"
- endorsement contracts for Pepsi, L'Oreal, and Tommy Hilfiger; and
- bragging rights for being crowned as the first non-model and non-athlete woman to grace the cover "Sports Illustrated Swimsuit Issue."

Why would Beyonce, whose name is a registered trademark with incredible brand name recognition, suddenly want to change her name to "Sasha Fierce?"

Beyonce wants to be known by the name of her alter ego, whom she describes as: "the fun, more sensual, more aggressive, more outspoken side and more glamorous side that comes out when I'm working and when I'm on the stage."

In all seriousness, my question remains, "Why?" I am skeptical that Beyonce wants to change her name for personal reasons. I think "Sasha Fierce" has much more aggressive connotations, but what it makes up for in vamped up sex appeal, it lacks in sincerity. I also imagine that the name change is an attempt to market a whole new line of products, cuing consumers to fear being associated with a brand that was SO five minutes ago.

This Pseudonym Movement has been done by other artists, often as an early indication of the demise of their popularity. These celebrities panic to re-create themselves, rather than attempt a come-back in the more-distant future. For example, Prince became "The Artist Formerly Known as Prince." Puff Daddy has been known as P. Diddy, Sean Combs, and Sean John. And in the extreme, Garth Brooks took a walk on the rock side as his alter ego, Chris Gaines.

My advice to Beyonce would be to stick with what works. People around the world envy her talent and career opportunities. Be greatful and proud of who she is, and the brand that she has become. Leave re-inventing the wheel to the has-beens.

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November 3, 2008

Celebrity Trademarks: Paris Hilton

Go ahead, roll your eyes. I am. And I'm synchronizing it with an annoyed sigh and a defeated slouch. As irritating/overrated/superficial/predictable/contrived/insincere/underwhelming as Paris Hilton is, I have to give the girl credit for this undeniable irony: the emaciated "celebutante" consistently manages to shove her brand name down the American consumer's throat.

Get this: the goods and services identified by the "PARIS HILTON" trademark (Reg. #3249904) includes "conducting parties in nightclubs" and "personal appearances by a media celebrity."

Other (so-called) notable Paris Hilton trademarks:
- her initials, as a logo

- the logo for her perfume


- the title, "Paris Hilton's My New BFF" for her new MTV reality show, where contestants vie for for the coveted title of Paris' new best friend


- And who could show their face in public without Paris' signature stamp of approval: "THAT'S HOT" (Ser. #77163240)

Which celebrity would you like to see on my Celebrity Trademarks spotlight? Have you wondered whether your name or image is eligible for trademark registration? Ask me.

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October 13, 2008

Celebrity Trademarks: Tiger Woods

Two years ago, the managing partner of my law firm bought me my first set of golf clubs, had them personalized for me, and hooked me up with private lessons. Little did he know: he created a monster.

It doesn't take a golf fanatic to appreciate that Tiger Woods could very well be the greatest golfer in history. But it's not just his game on the course that makes him a multi-millionaire--"Tiger Woods" as a brand name is worth millions in endorsing goods and services.

The name, "Tiger Woods," as a trademark, has been used since 1997 to identify golf gear and athletic apparel (Reg. #2306354). But that's just the beginning of the list of trademarks in Tiger's name; here's more:
- his autograph

- the "TW" logo on his website and clothing


- the names and logos for the Tiger Woods Foundation
- an image of his signature fist pump (Ser. #79055290)
Curious about another celebrity's trademarks, or want to know how to make your name a brand name? Let me know!

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