Trademark – Page 6 – The Business of Creativity

September 2007 Scene Magazine Article: TM Myths

OOPS! I forgot to post this earlier this month…

Trademark Myths
© 2007 Kevin E. Houchin

There’s a lot of misinformation floating around the business world about trademarks. Smart business people are waking up to the fact that this area of LAW is critical to successful BRANDING, which as we all know is the foundation of sales, revenue, and ultimate business success or failure. It doesn’t matter if you are selling widgets, houses, luxury cars, guitars, or brooms – your brand is one of your biggest assets, and trademark law is the protective mote around your brand. Here are top mistaken assumptions business people tend to make about trademarks.

10. I changed a letter and got the domain name, so I’m OK.
Wrong! The test for trademark infringement is not if a letter or word is different. It’s whether or not consumers would be confused as to the source of the goods and services.

9. Someone else is already using the name, but they haven’t filed a registration, so if I file first, I’ll be OK.
Wrong! The tests for trademark infringement isn’t who registered first, it’s who used the trademark in commerce first.

8. Just using the “TM” symbol gives me all the protection I need.
Wrong! While it’s smart to use the “TM” symbol next to anything you want to claim as an indicator that your company is the source of the goods and services, just using the “TM” will not give a generic or merely descriptive trademark any protection unless you can prove the trademark has achieved what’s called “secondary meaning” in your marketplace.

7. I can use my competitor’s brand in my Google Adwords buy without any problems.
Wrong! Just because Google doesn’t check for trademark infringement and will let you place the ad doesn’t mean your competitor won’t be ready to slap you with an infringement suit if you use their name as a keyword to distract consumers from their site and lead them to yours.

6. I own the domain name, so I can stop anyone else from using something similar.
Wrong! Even if you got there first to register a domain name, the test is who USES the mark first. Sitting on a domain name doesn’t count. Launching a Web site that includes the name for a product, but not actually selling the product, doesn’t count. You have to use the name appropriately to get protection, which means if you’re offering a product, the name has to be on the actual product. If you’re offering a service, then a Web page is usually good enough.

5. I filed the LLC papers with the Secretary of State on this name, so I’ll be OK.
Wrong! Filing your name with the Secretary of State is basically the same as getting the domain name. Their test is just if the string of letters is different. Again, trademark infringement is about consumer confusion, which is a much more difficult standard than just changing a letter or two.

4. As long as I’ve used my product or company name in commerce, nobody else can use it for anything.
Wrong! You could have a great trademark for a marketing firm, but I could potentially use that name for my line of clothing – as long as we’re marketing to different people and my customers wouldn’t be confused about whether you are the source, sponsor, or are otherwise affiliated with my products. Again, it’s about consumer confusion, and that’s sometimes hard to define.

3. I paid the $50 to register my trademark with the secretary of state, so I’m covered.
Wrong! You’re probably covered in Colorado (or whatever state), but that does nothing for your business with people in any other state. State-specific trademark filing is practically a relic from the pre-internet days when it took more than just launching a Web site to have an interstate or international business presence.

2. I’ve invested a lot of money in this name, logo, stationery, and marketing materials, they can’t just make me toss it all and start over.
Wrong! This is exactly what a prior user can make you do, and make you pay damages and/or profits on top of that. It’s just this risk that makes investing a branding strategy that doesn’t include a trademark plan such a dumb move.

1. I have the domain name and I use the “TM” on my stuff, so it’s not worth the expense to register my trademark.
Wrong! Having the domain name is a good indicator these days that you’re the first user of the mark, and using the TM is very effective at putting potential infringers on notice that you’re claiming the mark as an indicator of source for your goods or services. However, in today’s competitive market place, registering the trademark with the United States Patent and Trademark Office is in most cases worth the expense if you think you will ever need to enforce your rights. The power of the registration will both increase the chance of a quick resolution, and lower the litigation costs of an infringement suit.

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Kevin E. Houchin is principal of Houchin & Associates, PLLC – a copyright, trademark, arts & entertainment, business development, and branding firm located in Fort Collins, Colorado. To contact Kevin, call 970-493-1070 or email kevin.houchin@houchinlaw.com.

August 2007 Scene Magazine Article

Thank you. Thank you very mush…
© 2007 Kevin E. Houchin

With our local film festival, the TriMedia Film Fest (www.trimediafilmfestival.org) coming up September 7-9, I thought it would be fun to take a look at some of the legal issues that go into making a film, believe me, there are plenty, but the ones that are most fun involve copyright. Let’s take a look at an issue facing one of the festival’s entries from last year. The film in question (we’ll call it G&A) includes a female Elvis impersonator as one of the characters. It uses some Elvis tunes as part of the soundtrack. Simple enough one would think–just pay the Elvis estate the licensing fee for the music and get permission to use Elvis’s likeness in the form of the impersonator.

Not so fast hound dog. The Elvis estate won’t release the music rights unless the backers pay royalties anytime an Elvis image shows up in any of their projects. (It happens that the backers of G&A also finance a lot of other projects as a major broadcaster.) Long story short: the film stays in the can. Feeling pissed off? So am I.

As a copyright and trademark lawyer, I understand the need to protect people’s rights to their creative work (copyright and patents), and to protect their investment of time and money in building a distinctive brand (trademark). But there has to be a balance, and I don’t think the Elvis estate is not honoring that balance. The framers of the US Constitution gave Congress the right to establish Patent and Copyright policy balancing advancement of society though the arts against individual rights of artists and inventors.

The creative rights of authors and inventors are offset in several ways. First, copyrights and patents expire on a certain date and “fall” into the “public domain.” Once the term expires, everyone can freely use those works directly in new work and thus advance society. The second balancing point is the free expression rights granted under the First Amendment. These free expression rights inform and motivate the final balancing theory, known as “fair use.” Fair use is a good thing for everyone in the creative industries to know about.

Remember the point of intellectual property law is to advance society and society doesn’t advance unless creativity is shared–we can’t hide our lights under bushel baskets and expect our community to prosper. Yet, we can’t just rip the financial incentive to create away from authors by allowing everyone to use whatever they want whenever they want. So, when is it “fair” to infringe?

Trademark, Patent, Copyright all have fair use “doctrines,” but we’ll focus on Copyright. Copyright fair use is covered by section 107 of the Federal Copyright Act and states explicitly that it’s fair to infringe for purposes such as criticism, comment, news reporting, teaching, scholarship, or research subject to four inter-related factors. As you can see, these uses generally help advance society through intellectual debate and discussion.

The four factors are subjective, meaning there is no percentage or word count or other such objective measurements for what is fair. The first factor is the nature and character of the infringing use–is the infringer a professor quoting a passage in a scholarly journal, or a popular musician grabbing a riff to help sell records? (Think of Vanilla Ice’s “inspiration” for the rhythm in Ice Ice Baby vs. Queen and David Bowie’s Pressure). The second factor is the nature of the original work–was the original created for general use, or was the creative act how the author makes a living? The third factor is the “amount and substantiality of the portion used” in relation to the original work as a whole. This is where people get stuck on the idea of word counts or percentages. Obviously, the less you “take” the more “fair,” but if you take a CRITICAL element of the original you’ll get in trouble. The fourth factor, the “effect of the [infringing] use upon the potential market for or value of the original work.” Remember that a judge or jury that may have no creative sensibilities at all will ultimately make this subjective decision.

So, let’s get back to the Elvis impersonator. Could G&A run without permission from the estate? The practical answer is that the filmmaker would probably prevail on the issue of the impersonator as long as no endorsement of the Elvis estate is inferred. But, if the filmmaker wants to run the film with the actual Elvis recordings as part of the sound track, she needs permission for at least the music. In this case, as in most films, the music is a very important creative and emotional element. So, the film is canned until the Elvis estate backs off. Any bets on when that’ll happen? I didn’t think so.

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May Scene Magazine Article based on Kissing Toads Ebook

Kissing Toads
© 2007 Kevin E. Houchin, Esq.

It happened to me again the other day. I was at a presentation and this wonderful little start-up company was a featured presenter. They had cool technology and a great business plan. The team is obviously a brilliant group of engineers. They have sound financial advisors.

They were however, visual toads–princes of innovation wrapped in a very ugly package. I’ve kissed many toads. Unlike the fairy-tale princes, it’s not hard to spot the prince-in-disguise when it comes to technology firms. I love and respect engineers and scientist. I often make fun of engineers the way most people make fun of lawyers – with respect and at least a nugget of truth.

Engineers are SMART people. Their brains just didn’t notice some things, as with the presenter I talked about above. For example:

•   Their slides sucked; they were completely unreadable,
•   The screen shot of their Web site sucked–again, completely unreadable,
•   Horrible use of space and color, and most importantly
•   They made no emotional connection with the audience.

Honestly, it was embarrassing–at least to me.

The interesting thing about this group, as opposed to most technology groups I’ve worked with, is that they had a good company name, and had obviously thought of a good metaphor to bring their different brands and projects together. They had simply delivered it poorly. Engineers usually do not make good artists – with a few notable exceptions like Buckminster Fuller.

Love that name… “Buckminster.”

They needed help, but they didn’t know it because they had not entered the consumer market space yet. They had only been selling to people just like themselves–folks who focused only on engineering, and didn’t care about the packaging. There’s nothing wrong with that, until you want to move into the consumer market. The consumer market is a place where non-engineers go about their lives and even buy technology.

I’ve designed dozens of logos and branding systems and supervised the design and implementation of dozens more. I work with smart people, and most entrepreneurs are very smart people.

My Approach to “selling” anything starts with an EMOTIONAL THEME. The foundation of any communication strategy is the emotional state of the person to whom you’re trying to make your case.

•   How do they feel?
•   How SHOULD they feel?
•   How do you WANT them to feel?

To create the emotional theme, you have to understand what motivates your buyers.

•   Are they buying because they have to, or because they want to?
•   Are they buying from you because you have the best product?
•   Are they buying from you because you have the lowest price?
•   Are they buying from you because you give the best value?
•   Are they buying from you because your sales executive had them on a chartered sailboat in Vancouver Bay last month?
•   Are they buying from you because your product will make them feel sexy, powerful, masculine, feminine, free, secure, or innovative?

Everyone can give value and put out a good product. Everyone can hire great salespeople. Not everyone can evoke the emotions of power, freedom, security, style, or intelligence. That’s your challenge.

Identify the emotions you want to project onto your product, and then deliver those emotional experiences. Odds are if you communicate the right feelings in your communications, those feelings will manifest in your customer experiences.

This column is based on an ebook of the same title by Kevin E. Houchin, Principal of Houchin & Associates, PLLC–a copyright, trademark, arts & entertainment, business development, and branding firm located in Fort Collins, Colorado. To contact Kevin, visit www.guidingvalue.com, call 970-493-1070, or email kevin@houchinassociates.com.