May 07 2008
Trademark Issues
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Here’s how to get the maximum mileage out of your catch phrase. Develop a distinctive one, use it in interstate commerce, and register it.
As with copyrights, legal rights to trademarks arise automatically without governmental formalities. But unlike copyrights, trademark rights don’t begin at the moment a word, symbol, or phrase is first scribbled on paper. Rather, trademark rights stem from the actual use of a distinctive mark in commerce.
If you develop a catch phrase, you should register it. You might wonder why this is important, but the benefits of federal registration will hopefully convince you. First, registration means the trademark is legally valid. This protects you in case of an infringement lawsuit. If you’ve registered the mark, the burden of proof shifts to the defendant to show why the registered mark is undeserving of protection. Second, registration is a nationwide notice of the registrant’s claim of ownership. That means someone else using the mark in another part of the country can’t claim territorial ownership rights. Third, federal registration comes with the right to file infringement lawsuits in the federal courts. In case you’re not already convinced, registration simply serves as a deterrent for others who won’t use your mark in fear of a legal battle.
Federal registration only goes so far. The owner of the mark still bears the burden of protecting it. The primary method of protecting a catch phrase is to file an infringement lawsuit. The plaintiff may sue for financial damages, an injunction against further use, or both. The basic test in infringement lawsuits is whether the allegedly infringing phrase is similar enough to create a “likelihood of confusion.”
“Three-peat”
In 1988, Pat Riley and his Los Angeles Lakers were headed for a third consecutive NBA championship. The team started to use the term “three-peat” to describe their ultimate goal. Coach Riley claims the term originated from player Byron Scott. During the season, Riley registered the phrase as a trademark for use on merchandise. The Lakers’ third championship attempt was thwarted by the Pistons in 1989, but the Chicago Bulls accomplished the feat in 1993. Riley was able to slam-dunk all the way to the bank when the Bulls opted to use the phrase for championship merchandise.
In 2005, a group of USC students were anticipating a third consecutive BCS championship and attempted to trademark the phrase “Three-Pete.” The misspelling was created not only to avoid paying Riley for use of the phrase, but also to pay homage to coach Pete Carroll. The federal trademark board ruled that the spelling difference was not enough to differentiate it from Riley’s three-peat. When a student started to sell his own “Three-Pete” shirts he was served with copyright infringement notification. And, just like Riley, USC did not succeed in reaching a three-peat.
Riley subsequently collected royalties on four occasions, twice when the Bulls won three consecutive championships and again when the Yankees and Shaquille O’Neal’s Lakers did it. He has said he has given
most of the money to charity.
“That’s hot,”
Paris Hilton has filed suit in a U.S. District Court in Los Angeles against Hallmark for the card company’s use of her likeness and her trademarked catch phrase, “That’s hot,” on a greeting card. The problem began when they started selling a $2.49 card with a cartoon captioned “Paris’ First Day as a Waitress.” Hilton’s face is superimposed over the face of a waitress, who is handing food to a patron and explaining, “That’s hot.” Hilton has a trademark on those two words. She registered them in 2006 (claiming that she first used the phrase “that’s hot” on September 20, 2006) for use on her line of men’s and women’s clothing.
Hilton seeks $500,000 in punitive damages resulting from an invasion of her privacy and misappropriation of her image, and wants to prevent Hallmark from using her likeness ever again. Hilton’s lawsuit contends that Hallmark is diluting the value of her catchphrase and image, and infringing on her ability to use it for commercial gain.
Do it yourself development of a catch phrase.
Only the brave will develop a catch phrase and market it alone.
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