Trademark Wars - Part 3: It's Not All Fun and Games With Online Games

What's in a name? I've been asking that question for almost thirty years and it never gets old. Great names and trademarks make for great businesses. Just ask GOOGLE, YAHOO, MRS. FIELDS, GREYHOUND, APPLE, and countless others.

But naming is often harder than it looks and often not pretty. Right now Zynga - home of the popular Internet game site FARMVILLE - is locked in an expensive legal battle with a company called Digital Chocolate over who owns the rights to the trademark MAFIA WARS for an online game, etc. Here is an article about the lawsuit filed by Digital Chocolate against Zynga in which Digital Chocolate claims that Zynga has stolen the MAFIA WARS trademark. If you are really ambitious, there is a link in the article to the actual complaint filed by Digital Chocolate that started the lawsuit.

It's Called The Music "BUSINESS" For A Reason.......

One of the great challenges for a professional songwriter, musician (or any other creative type for that matter) is to try to balance the creative spirit with the need to take care of business. Sir Francis Bacon is credited with having written "For also knowledge itself is power". In other words - "knowledge is power". Nothing could be more true when it comes to the music business. That is why music business conferences are a great opportunity for songwriters and musicians to bone up on the business side of things in a concentrated way in a couple of days.

San Diego's very own North Park Music Thing kicks off this Friday August 13th at the Lafayette Hotel in the North Park section of San Diego. During the days on Friday and Saturday there will be loads of panels and workshops on everything from getting started in the music business to music public relations to social networking and important legal topics (moderated by yours truly!).

At night on Friday and Saturday there will be dozens of music showcases all over North Park. The price of admission to the conference includes a wristband for the music showcases. People pay hundreds of dollars to attend conferences like this in Austin, Texas and New York City; the North Park Music Thing is quite affordable at $20 for a one-day pass and $35 for a two day pass.

The Importance of Due Diligence

Two of the biggest pitfalls a business owner can make when planning on filing a trademark application with the Patent & Trademark Office is failing to perform a detailed trademark search beforehand and failing to understand the basic rules of trademark law. This is a little something we lawyers like to refer to as a lack of due diligence. Typically what happens is a business owner, who most likely and understandably is trying to save a few bucks, sets their heart (and more importantly their pocketbook) on building their brand around a name and/or logo that may not necessarily be available to them or without understanding what makes a good and clear trademark. What these passionate entrepreneurs fail to understand is the 'likelihood of confusion' their potential mark might cause when compared to existing marks already established in the marketplace. Take Tami Cromar for instance. She is a small business owner of a cookie shop based out of Salt Lake City, Utah. She is currently at odds with Pillsbury Corporation, a subsidiary of General Mills, because of what she chose to name her shop: My Dough Girl. According to the Pillsbury Corporation, the name of Cromar's business is confusingly similar to Pillsbury Corporation's Dough Boy®trademark. Rather than fight the industry giant, Cromar has decided to concede to General Mills' claim of infringement and has begun working on a new name for her business. Ultimately when it comes to filing a new trademark application, we recommend to our clients that they think about the money they can save in the long run by doing their due diligence ahead of time. Here is a link to the article that details the Pillsbury vs. My Dough Girl case.

Copyrights: For Songwriters - Registering Copyrights vs. Registering with ASCAP/BMI/SESAC

One of the questions we frequently receive is whether it is necessary for a songwriter to register his/her songs with both ASCAP (or BMI or SESAC) and the Copyright Office. One of the main things about the U.S. Copyright Office application/registration is that in the U.S. you need either a pending copyright application on file or an actual issued copyright registration certificate IF you have to sue someone for copyright infringement - depending on which legal jurisdiction you have to file your lawsuit in. So...in our experience it is better to file a copyright application sooner rather than later and it is not a question of either filing with ASCAP/BMI/SESAC or the Copyright Office; it is a matter of needing to do both.

Copyright Wars - Why Bother Registering A Copyright?

Of all the forms of intellectual property protection - patents, copyrights, trademarks, trade secrets - copyrights are the most affordable to register. Copyrights are the lifeblood of just about every creative type of business, entrepreneur and artist. The general rule in the U.S. is that the copyright in a work MUST be REGISTERED with the U.S. Copyright Office BEFORE a copyright infringement lawsuit can be filed. There are some exceptions to that general rule, most notably in the 9th Circuit due to a recent court decision here. The 9th Circuit consists of California, Alaska, Oregon, Nevada, Arizona, Idaho and Montana. Thus in the 9th Circuit a copyright infringement lawsuit can be filed if the copyright owner has merely filed a copyright APPLICATION, even if the registration certificate hasn't issued yet. But in states where the general rule applies, it can be a real drag if you have to wait for the Copyright Office to process your copyright application before you can file your lawsuit. That can take anywhere from 8 - 18 months (or more) - UNLESS you want to pay a "Special Handling" fee of $760 on top of the regular $35 fee. The Special Handling fee will usually get the Copyright Office to register your copyright in about 10 days or less. When it comes to copyrights, our motto is: "Register early and often".

Copyright Wars: Google Wins Round 1 in Viacom Lawsuit

For better or for worse, the wheels of justice can sometimes move at something less than lightning speed. Viacom Inc. filed a $1 billion federal court copyright infringement lawsuit against YouTube more than three years ago and only this week the judge in the case 86d Viacom's complaint. [In technical legalese the judge granted YouTube's motion for summary judgment]. This doesn't mean that the case is over, and Viacom may still get its "day in court" - but the granting of the summary judgment motion is a bad sign for Viacom. Now it will have to appeal the court's decision to the federal court of appeals. We predict that the case will eventually end up in the U.S. Supreme Court. Here is a good article which describes the latest developments in this case in greater detail.

Trademark Wars - Part 2: Bogus Trademark Protection & Renewal Services

If you own a U.S. trademark registration - or even if you have just filed a trademark application - you may receive an unsolicited official-looking notice from an organization with an official-sounding name like "U.S. Trademark Protection Service" that offers to "monitor" your trademark application or renew your trademark registration. These companies are not affiliated with the official U.S. Patent & Trademark Office ("PTO") where you filed your trademark application and it is unclear who owns, controls and operates these document filing companies. What is clear is that many trademark owners are confused by these notices. It is also clear that many of these companies appear to be practicing law without a license AND are providing incomplete advice. For example, the notices from these companies that I have reviewed usually fail to notify a trademark owner that it is important to file an "Affidavit of Incontestability" with the PTO between the 5th and 6th year after a trademark is first registered. Filing the Affidavit of Incontestability is optional - not mandatory - but it greatly improves and strengthens the value of your trademark registration.

Here is an excerpt from the warning notice at the PTO website:

Warning to USPTO Customers: Trademark Monitoring and Document Filing Companies

You may receive unsolicited communications from companies requesting fees for trademark related services, such as monitoring and document filing. Although solicitations from these companies frequently display customer-specific information, including USPTO serial number or registration number and owner name, companies who offer these services are not affiliated or associated with the USPTO or any other federal agency. The USPTO does not provide trademark monitoring or any similar services.

Such companies typically charge a service fee in addition to applicable USPTO fees. In many instances, applicants and registrants have mistakenly believed that the USPTO has issued these communications or that these companies are affiliated with the USPTO. Complaints about such companies or communications may be made to the Federal Trade Commission, at http://www.ftccomplaintassistant.gov/.

Here are Branfman Law Group's tips to our clients and friends: (1) Remember that the official name of the PTO is "United States Patent & Trademark Office"; (2) If you used a lawyer to file your trademark application, contact your lawyer when you receive one of these unsolicited notices; and (3) If you filed your own trademark application or want to renew your trademark registration yourself, go directly to the PTO website at www.uspto.gov and follow the instructions. We are here to help if you have any questions.