Sometimes in talking about topical areas, we use generalizations. You know, like when we talk about computers, sometimes we say hard drive, when we are really thinking about RAM. Or we might be talking about our business when we say inventory turnover when we really mean asset turnover. It’s not exactly a Freudian slip, but it is a habit of putting things in umbrella categories.

So I noticed the same thing in intellectual property. In I.P., there are three different “buckets” (well four, if you count trade secret as a category). The buckets are “copyright”, “trademark”, and “patent”. Really innocuous words, right? Way more approachable than asset turnover random access memory (RAM), at least in my opinion. But still, there is all sorts of confusion (no pun intended) about what is what. What is capable of acting as a brand and what is capable of protection as a written work. You might have been subjected to this confusion over which I.P. is which, perhaps because you see the, TM, ®, and © symbols used seemingly interchangeably across different items. Sometimes the confusion can be taken to such extremes that multiple symbols are used simultaneously. Yep, just like what happened here, where the owner of a nut stand went nuts with using the official legal designations attached to the name of his product.

This news story about a Chinese company attempting to obtain a trademark on the word “Snowden” for a type of electric car with “top-secret” technology (which is where the Snowden name will come into play) is a further manifestation of the amalgamation of protections of I.P. under one umbrella. The article talks in one breath about how the company has applied for a “patent” and then in another breath it uses the word “brand”. Could it be a simple journalistic error or is it the result of a deeper confusion (no pun intended) about the true purpose of a trademark? This is not a post about “copyright vs. trademark” in the traditional sense and how to use each type of protection properly because there are already a gazillion of those on the net (and I’m all about originality!), including one from the USPTO itself. Instead, this post is more of a rumination on the tendencies for people to get confused about the purposes of legal protections. Now I’m not trying to be the grammar police here. I just want to understand what is truly going on in people’s minds when they confuse trademark, patent, and copyright.

It all comes down to this (essentially): anything that can designate a source for particular goods or services in the marketplace is a trademark. Anything that is an original, creative work of authorship (with some exceptions, such as actual ideas or useful things like tool designs and/or door handles, completely random, I know) is protected by a copyright. And patents protect useful, non-obvious and new inventions or discoveries including machines, methods of manufacture, or mixtures of things together constituting compositions of matter. Seems like pretty distinct categories, right? You have trademarks that protect symbols that have some kind of value in the marketplace (you use them as logos, connect them to products and services, and market them). Copyrights correspond broadly to works of art, which (on the whole) are completely different from symbols that are used in the marketplace. And patents deal with technical stuff. Simple enough.

But where does all the confusion as to the differences between trademark and copyright come to the fold? One point of confusion might be that symbols (such as the ubiquitous Mickey Mouse ears) may be associated with copyrighted works. So people see the mouse ears (which may not have the © or ®) and a movie instantly comes to mind, which most people easily recognize as a copyrightable work. Another point of confusion might be that logos (classified as pictorial work) are potentially copyrightable works, so people assume that (as a work of art) the logo gets copyright protection. It seems more difficult to trace the source of confusion over the significance of the word patent, but perhaps the confusion stems from the fact that anything that is proprietary is assumed to be exclusive, so someone may automatically think that something which was created by a company can be “theirs”, or otherwise it can be patented.

At the risk of creating even more confusion over the subject, certain objects can be protected by multiple types of I.P. For example, a shoe design can be protected by a design patent and can eventually be protected as trade dress (a type of trademark protection) if the shoe acquires secondary meaning (widespread recognition in the marketplace by a group of consumers). In fact, this is exactly what Disney is doing with its Mickey Mouse character: because the copyright on the original Steamboat Willy film is close to ending, Disney is now running a prominent portion of the clip before feature films in an attempt to turn the clip into a trademark. So now instead of being a creative work, the film clip has bridged the gap to become a useful symbol in the marketplace that can tip consumers off as to where the film that succeeds it came from.

At the end of the day, just remember this simple framework:

1.       Trademarks are for things (words, designs, product packaging, sounds, even film clips) that can identify the source of where your product came from.
2.       Copyrights are for written, designed, or theatrical works that were created by an author and are not intended to exclusively identify a source, at least in a commercially significant way.
3.       Patents are for inventions or discoveries (not abstract ideas), but the kinds of things that require technical drawings, flowcharts, schematics, and prototypes to describe.

This is a follow-up post to a musing from last week regarding the protection of a person’s likeness as a type of trademark (because a person’s identity and interesting quirks can have source identifying capabilities). In that post, we learned that a person’s traits could be valuable in the marketplace because the trait (whether it be the moonwalk dance performed by a musical artist or the “dirty bird” performed by an athlete upon making a big play) can be used to identify the personality associated with it, which can in turn be used by a media company (be it a video game developer or a maker of toys) to signify authenticity or advertise endorsement. Indeed as courts have held, while trademark law protects the public’s interest in being free from consumer confusion about affiliations and endorsements based on the inclusion of a person’s likeness, this protection is limited by other considerations such as first amendment, and free speech concerns especially where a particular work through which a likeness is conveyed is classified as an expressive work (such as a video game, move, or play).

Since writing that post, a prominent court (the 9th Circuit Court of Appeals in California, a court that routinely deals with intellectual property law issues) handed down a ruling that gamers love but major organizations like the NFL hate. The case is interesting for the balance it strikes between protecting an individual’s right to publicity (which is distinct from protecting a person’s likeness) and protecting the first amendment interests of the public in being allowed to use authentic representations of characters in media. By looking at this balance, we can more clearly see what trademark law truly protects. Here’s a hint: it’s about more than just a dance.

First, some ground work. Video games nowadays are pretty darn realistic. They have to be, right? After all, who wants to watch a bunch of pixelated blobs grunting up and down a simulated field that is a flat green polygon lacking any texture, with smaller pixelated blobs cheering in a sea of still more cheering blobs? That would just be lame. So game developers (to take advantage of faster computers and more robust graphics support) develop games with increasingly realistic graphics. E.A. Sports is no exception. In fact, in developing football games, E.A. sports sends out multifaceted questionnaires to NCAA and NFL team equipment managers in order to obtain information on a player’s equipment of choice. To obtain the rights to use the numerous logos, football stadiums, team colors, and of course the players in the games that EA produces, EA enters into licensing agreements with the NFL and NFL Players Association.

I am in front of the computer most of the day at work. This means my eyes get very tired. Sometimes when my eyes get tired, I feel the need to take breaks. When I take breaks, I sometimes fumble around and find odd things at my desk just to kind of entertain myself and save my eyes from becoming totally blurry. So I picked up one of these paper clip things. (I know what you’re saying: you took a five minute break and the best thing you could think to do was play with a paperclip?!) What can I say, I’m a true paper pusher!

Back to the paper clips, you might have seen them before. They don’t have the ordinary shape of regular metal paper clips and they are plastic which means they won’t discolor paper when you attach them to paper. The name on the top of the clip says “Plastiklips”. What an exciting (and nuanced name)! Its genius, I mean why didn’t I think of it? Calling a plastic paper clip “Plastiklip”. So fanciful. So catchy. So descriptive.

Then I got to thinking (also while on my break, well maybe on my next break): did somebody get a trademark on this? So being the trademark buff that I am, I made a trip to the USPTO website and ran a search for “Plastiklips” and, sure enough, up pops this trademark registration:

Now this just seems odd to me because, well, the trademark is registered for “plastic paper clips”. On the principal trademark register, no less. A trademark , “plastiklips” for “plastic paper clips”. ‘What’s the big deal?’ you might ask. Generally, a trademark cannot describe the goods that it is used on. Marks like “Blackoil” for goods such as synthetic oil that is black in color are not eligible for registration, at least not right off the bat. These kinds of trademarks are only eligible for registration if they have acquired what is called “secondary meaning”, meaning (sorry) that consumers attribute the trademark to a particular source. Descriptive terms which have acquired secondary meaning (and are now considered trademarks) include HOLIDAY INN, AMERICAN GIRL, and ALL BRAN.

But not every trademark can acquire secondary meaning. It’s not one of those things that just happens. Trademark owners sometimes have to invest significantly in marketing and may even have to obtain a consumer survey (which can be hugely expensive). Seem like an unfair burden to place on someone who put their creative juices to coming up with a slick trademark? Imagine the hardships in the marketplace that would ensue if words that described a class of goods was trademarked? Wouldn’t other makers of products who wanted to describe their goods using the same descriptive word run afoul of the trademark owners’ rights? This problem has cropped up time and time again where one company has a descriptive trademark and they try to prevent some other company (usually a competitor in the same field) from using the trademark.

This strategy of enforcing a descriptive mark can get dicey, though, because a competitor that is using the descriptive trademark on their goods could file a petition to cancel the trademark owners’ descriptive mark. And unless the trademark owner has some pretty compelling evidence showing that the trademark has acquired secondary meaning, the trademark could be invalidated for all to use. This is exactly what happened in the case of the battle over the mark FISH FRI where Zatarains’ trademark registration for the FISH FRI trademark was cancelled by another food company which wanted to use “FISH FRY” for food frying stuff. Zatarain’s got fried alright!

Getting back now to my paper clip inquiry, what of the viability of the PLASTIKLIPS trademark? I found this other paper clip company that makes the same type of plastic paper clip, but uses the name “Plastic Clips”. Of course, they haven’t tried to get a trademark for this name (any attorney that took that case would be engaging in gross malpractice), but isn’t “Plastic Clips” pretty much identical to PLASTIKLIPS? Seems nearly identical phonetically and conceptually. If the two trademarks are similar, that seems like a recipe for an infringement suit doesn’t it? Unless you have a descriptive trademark like PLASTIKLIPS and you are holding on to that registration as the last great vestige of hope in your paper clip empire!

Seriously though, I don’t think I would waste the money on a lawsuit against a company that used the phrase “Plastic Clips” for their product, especially if I knew I was going to lose. This all begs the question though: why does the owner of the PLASTIKLIPS mark continue to renew their trademark? Maybe it’s a clip of nostalgia on the part of the owner. Who knows.

Anyways the takeaway is that if you are going to use a descriptive word or phrase as your trademark, make sure that you are ready to expend the significant resources that it takes to prove that your mark has acquired secondary meaning. As they say in sports, go big or go home. 

Here’s something many people may not suspect: sounds can actually be trademarked. Sounds are just as capable of source identification as words, within reason of course. The USPTO has a page on their site where you can sample some sound trademarks. Some easy examples of sound trademarks are NBC’s tri-tone ding, Intel’s start-up “tune”, and Taco Bell’s bell toll. Sounds good to me, you might say. I make this product that hums like the Humming Chorus from Puccini’s Madam Butterfly. But are there limits to sound trademarks? Surely there must be since not everyone who attempts to obtain a sound trademark is successful in obtaining a trademark. For example, Harley Davidson gave up in its attempt to get a trademark on the thump-thump-thump sound made by its engine after it faced the prospect of opposition from other motorcycle manufacturers over the fact that the sound being claimed by Harley Davidson is a sound made by all motorcycle engines.

The argument posed by Honda and Yamaha was an incarnation of the “functionality” argument, and it is a concern for anyone trying to obtain a trademark on packaging designs or sounds. If an aspect of a trademark being claimed is functional, this means that the thing is not necessarily source identifying but instead serves some kind of utilitarian purpose. A feature can also be functional if it affects the cost or quality of the underlying good. A feature of a product can be protected if it has source-identifying capabilities. But source-identifying doesn’t mean unique to one type of product, if all other products make the same sound or have the same design, too because of how the pistons in an engine move (the problem in the Harley Davidson case.

There are competitive and doctrinal reasons for not allowing companies to obtain trademarks on functional items, one of the reasons being that the trademarking of a functional item would work a huge competitive disadvantage to other businesses in the marketplace that also produce items with the same functional features. Imagine the mess that would ensue if a motorcycle manufacturer was forced to tweak their engine ever so slightly so it did not make the thump-thump-thump sound of a Harley only to have a jury find that the sound was still similar to that of a Harley motor!

So it would seem that any sound that is even remotely mechanical or made as a result of necessary motions or internal components is out as a potential trademark. But not so fast! John Welch of the TTABLOG (a place where I hang out often and go to find out all about the latest shenanigans at the Trademark Office and the Trademark Trial and Appeals Board) has reported on an opinion where the Board (the TTAB) overturned a decision by the patent office that the 3-click sound that a certain brand of sunglasses makes the little “arms” on the sides of sunglasses are moved from the folded position to the extended position so that you can wear them. An examining attorney that initially reviewed the trademark application rejected the application for the 3-click sound because he believed that the sound was merely an essential byproduct of the product’s configuration.

To reach their conclusion, the TTAB looked for whether there were any utility patents where the clicking sound was described (this would be a common tip-off that the sound made by the glasses hinges was functional). Finding nothing, the TTAB then considered evidence offered from inventors of the glasses, who claimed that even though the clicking noise was a “natural byproduct” of the hinges on the glasses, competitors would not be placed at a disadvantage if their glasses could not make the same sound because the glasses themselves do not have to make any sound in order for the same hinge mechanism to work.

But is that a primary reason for finding non-functionality? A feature of a product is functional if it either performs the function that it was intended to perform or if competitors must use the same function in order to compete effectively (the same two considerations outlined above). In this case, the applicant’s argument that the 3-click sound affects no competitive advantage because similar hinge mechanisms could be designed without imposing additional costs appears to have won the day. So the functionality concern and the impact on competition is addressed. But what about the argument that the 3-click sound is simply performing a function that it was intended to perform? According to the applicant, the 3-click sound was produced as a “natural byproduct” of the particular mechanism in the hinge. But if the clicking sound was made by virtue of the hinge, wouldn’t this mean that the sound is functional? If this kind of functionality is asserted (which it could be, if a competitor challenges the trademark application during the opposition process), then I think a compelling case could be made against the registrability of the 3-click sound as a trademark. In that case, the applicant for the 3-click trademark would have to prove that consumers recognize the 3-click as “belonging” to the one particular sunglass manufacturer.

The takeaway from this is that some sounds, even if the sound has some connection with a mechanical feature, can be trademarked. You just have to be careful as an applicant for that sound as a trademark that you aren’t treading a path where you are trying to obtain a sound for a specific product or feature that will give you a competitive advantage and has its value in that aspect alone.

Sound good to you?

Some people are undoubtedly cool peeps. They have tens of thousands of twitter followers, they wear the latest and greatest, and they do endorsement commercials for Subway and Verizon. If you are a cool peep, you probably make appearances in video games like Guitar Hero or the latest installment of Madden NFL. Those appearances include you, in all your pixelated glory, doing the moonwalk or making calls from your cellphone during a touchdown dance. Is it so outrageous to think that your character in these appearances is protected by a trademark?
 
When you think of trademarks, you generally think of words or symbols attached to particular companies right? Okay, so the occasional celebrity who has decided to attach their name to a line of perfumes and clothing (see Kim Kardashian, Justin Bieber , or any other number of pop-star turned teenybopper idol with merchandise). Sure there is a motivation for this caliber of social star to get trademark protection for their name so they can make those glittery perfumes and woodsy colognes and sell backpacks and the like. But what about mere pop culture figures that aren’t even trying to make their name a household phrase? Can just being the public eye and having certain traits attributable to you as a person be enough to yield trademark protection?
 
Managing Intellectual Property recently published its list of the 50 most influential people in intellectual property and some of the candidates might shock you. In America, Tim Tebow and Angelina Jolie made the list, along with a host of people who you might expect to be on the list of influential figures, you know, like judges, lawmakers, and prominent I.P. attorneys involved in major lawsuits.
 
Tim Tebow and Angelina Jolie? Intellectual property innovators? Obviously the pair didn’t make the list for their contributions to major patent legislation or their involvement with the latest copyright case between YouTube and a major media company (pick a media conglomerate, any media conglomerate). So the tie-in must have been trademark law.
 
Indeed it is. Tim Tebow was cited for his preeminence as an athlete who has exploited his talents and fame through branding and trademark protection. As the author of this article pointed out, the attempt by athletes in general to protect their names as trademarks raises questions about ownership, what constitutes a trademark, who controls the mark, and the scope of the monopoly right by one person to a particular name. Could one of these questions be whether a person can get a trademark based on their persona? I find the question about what constitutes a trademark particularly interesting, specifically personas and the extent to which a trademark can be obtained as a result of a persona.