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24
May

Anatomy of a great entertainment trademark portfolio: STAR TREK

Posted by ipelton on: May 24th, 2013

If the number of trademarks is a measure, the STAR TREK franchise is tremendously successful. It may feature more trademark registrations and applications than any TV or film (or combination) property besides Star Wars®.

CBS Studios has more than 50 registrations and applications for Star Trek marks, including movie titles, character names, video games, and more. Here are some of them (click mark or logo for USPTO records):

LIVE LONG AND PROSPER – pending application for ‘Pre-recorded audio cassettes, audio discs, compact discs featuring a dramatic feature film; audio speakers; binoculars; calculators; cameras; cellular telephone accessories, namely, headphones, head sets, adapters and batteries for cellular telephones; cellular telephone cases; face plates for cellular telephones; computer game programs; computer game cartridges and discs; computer mouse; decorative magnets; pre-recorded dvds, digital versatile discs and digital video discs featuring a dramatic feature film; eyeglass cases; eyeglasses; mouse pads; sunglasses; video game cartridges; video game discs; fitted plastic films known as skins for covering and providing a scratch proof barrier or protection for electronic devices, namely, MP3 players, mobile telephones, smart telephones, digital cameras, global positioning systems, personal digital assistants; laptops’ [and several other pending applications for other goods]

STAR TREK SKELE-TREKS – pending application for ‘ toys, games and playthings namely action figures, bobble heads, puzzles and board games’ [and several other pending applications for other goods]

KLINGON ENCOUNTER – registered for ‘Entertainment services, namely, an amusement park ride/attraction in the nature of a theater with seat movement’

BEAM ME UP SCOTTY – registered for ‘t-shirts, sweatshirts, sweatpants, hats, tops, socks’

STAR TREK – registered for ‘Arranging and conducting trade show exhibitions in the field of motion pictures and tv series’

ROMULAN - registered for toy action figures

KLINGON – registered for ‘computer game software recorded on CD-ROM’

U.S.S. ENTERPRISE – registered for ‘die cast model spaceships and scale model spaceship kits’

U.S.S. VOYAGER – registered for ‘scale model figure kits and toy space ships’

CHIEF ENGINEER B’ELANNA TORRES – registered for toy action figures

TREKKIES – pending application for ‘Modeled plastic toy figurines; Collectible toy figures; Action figure toys; Toy figures sold as a unit with marker and writing surface’

DEEP SPACE WINE – registered for wine

STAR TREK DEEP SPACE NINE – registered for ‘Pre-recorded DVDs featuring episodes from the television series’

STAR TREK COMMUNICATOR – registered for ‘mobile phones and wireless communications devices with data transmission functions’

STAR TREK VOYAGER -registered for ‘computer game software recorded on CD-ROM’

STAR TREK: THE EXPERIENCE – registered for ‘entertainment services in the nature of an amusement attraction’

Mark Image- entertainment services in the nature of an amusement attraction

SACRED CHALICE OF RIXX – registered for wine

The owners of the Star Trek franchise have wisely recognized its tremendous value and the value in merchandising opportunities and the brand names that are used with it. 

23
May

Trademarks for two TV program reboots: 24 and Arrested Development

Posted by ipelton on: May 23rd, 2013

“Arrested Development” re-launches on Netflix soon after a hiatus of several years. And it was also recently announced that there would be a new mini-season of “24″ with Jack Bauer.

Arrested Development: the TV show name is unprotected at the USPTO. Perhaps because there is a band that also uses the name Arrested Development that owns several trademark registrations. Music and television are arguable quite related as forms of entertainment. But the show producers appear to never even have tried to register the name, which is not worth quite a lot. And they haven’t registered Bluth’s Original Banana Stand, which is now a real service that is being used to promote the show.

It sure appears the show could have done better to protect its trademarks. But how can any attorney not love a show with a character named “Bob Loblaw?”

 24: the 24 show is better protected with three USPTO registrations, including this one for ‘Entertainment services in the nature of a television series featuring drama; providing on-line information in the field of television, motion picture film and video entertainment via a global communications network’. The name is suggestive of the format – a show that takes place in 1 day, a 24 hour period, and is a race against the clock.

Trademark image

Arrested Development

Successful television programs generate strong brands. Some of them generate multiple brands, or brands that expand well beyond the television medium. For example:

- Star Trek

- Martha Stewart

- Oprah

- Saturday Night Live

22
May

Magic Hat and West Sixth brewery dispute highlights social media’s growing role in trademark disputes

Posted by ipelton on: May 22nd, 2013

A trademark dispute can take years to resolve before the courts and/or the USPTO. But public opinion can move much quicker. And rapidly moving pressure from public opinion can wreak havoc on the normally slow moving trademark dispute process.

Such was the case just yesterday as news online exploded about a dispute between West Sixth Brewing and Magic Hat Brewing over logos that Magic Hat believes are likely to be confused. [The news reports, of course, misreported many aspects of the matter - but that is another issue for another day.]

West Sixth generated and received some favorable news and social media coverage early in the day on Tuesday (see for example: http://www.aceweekly.com/2013/05/lexingtons-west-sixth-brewing-responds-to-magic-hat-lawsuit/) including a petition with more than 6,000 signatures already, Facebook posts, and a domain name www.nomoremagichat.com that forwards to its webpage on the topic. Many comments were posted on both company’s Facebook pages about the trademark trademark issue.

Last night, Magic Hat responded online. They released their side of the story. including letters from counsel for West Sixth that purport to show that West Sixth had already agreed to change the logo at issue. See documents below.

While I don’t know how this dispute will be resolved, I do know that this type of social media and public reaction is more and more likely to be a part of future trademark disputes. Brands are, at their core, about customers. And customers, directly or indirectly, help the businesses at issue come to the decisions they must make about their brands. And social media fuels these types of reactions and makes the potential for a loud and large public reaction easier and faster than ever.*

* I first noted this trend more than 2 years ago in January 2011. See slide 14 here.

Magic Hat Brewing and West Sixth Brewing by Mary Beth Popp

21
May

Academic study shows that using a trademark lawyer improves odds of registration at the USPTO

Posted by ipelton on: May 21st, 2013

This recent academic study speaks for itself, so I don’t have a whole lot to add!

The study, to be published in the summer edition of Stanford Technology Law Review, researched actual filing and registration data from the USPTO. The authors’ conclusion is that having an attorney means an increased chance of having an application approved for registration. And having an experienced trademark attorney increases the odds even more.

Of course, I’ve known this all along, as have hundreds of clients who have received more than 1,800 U.S. trademark registrations. There are many nuanced reasons why having an attorney matters, perhaps I will go into my thoughts about that later. But many of those reasons are self evidence – because you are hiring someone with a great deal of knowledge, experience, and resources in the relevant arena.

Stanford Technology Law Review

Here is the full cite for the study:

Gerhardt, Deborah R. and McClanahan, Jon P., Do Trademark Lawyers Matter? (April 8, 2013). Stanford Technology Law Review, 2013; UNC Legal Studies Research Paper No. 2246750. Available at SSRN: http://ssrn.com/abstract=2246750 or http://dx.doi.org/10.2139/ssrn.2246750

17
May

The Office finale: poorly protected trademarks #theoffice @theofficenbc

Posted by ipelton on: May 17th, 2013

The following is an update of a 2011 post, in honor of last night’s finale of The Office:

A report in this 2011Wall Street Journal article discusses how Staples – a real office supply company selling real printer paper – is now selling “Dunder Mifflin” brand paper via its online division Quill.com. Dunder Mifflin is (was?) a fictional paper company on the television show “The Office.” Even better, according the article, “the Dunder Mifflin packages will be emblazoned with slogans such as “Our motto is, ‘Quabity First’ ” and “Get Your Scrant on,” well-known phrases from the comedy series.”

This is part of a trend called “Reverse Product Placement” wherein brands that began as fiction become reality.

The concept is fascinating… and if Staples sells more of its paper because of it – even if they are paying a commission to NBC Universal – it will be a win-win I presume. However, the trademarks in the arrangement have not been well executed.

Here are the specifics of why this constitutes poor trademark management:

- No trademark notice with use of “Dunder Mifflin” name or logo on the paper packaging (see image below)

- No trademark notice in the online product listing for the paper (see below):

Dunder Mifflin Copy Paper; 8-1/2×11″, Letter Size

- No USPTO trademark filing from NBC or Staples for “Dunder Mifflin” name for paper

- No USPTO trademark filing from NBC or Staples for “Dunder Mifflin” name for paper

- No USPTO trademark filing from NBC for “Dunder Mifflin” name for television programming

- No USPTO trademark filing from NBC for “THE OFFICE” for television programming

- No filing from NBC or Staples for any of the great slogans mentioned in the article (“Get Your Scrant On!”)

For example, see the advertisement below – it features at least four trademarks (The Office, Dunder Mifflin, Quill.com, NBC) and zero trademark symbols next to any of them. It has a generic trademark notice in the lower left corner, but this is not very useful and does little if anything to help identify the “Dunder Mifflin” as a protected trademark. (Also, the * next to Oscar’s head noting that the ad does not constitute celebrity endorsement is quite interesting. Does this mean that the actors are not standing to gain in any way from the sales of the paper? I wonder!)

In short, NBC Universal Staples have invested money and risked their brand in part to launch this product. They stand to potentially make a lot of money. And they have completely overlooked protecting the names properly! If I was hoping to make millions of dollars off of a product name, I would certainly spend a few thousand to enhance the protection of that same! Why wouldn’t NBC Universal?

DUNDER MIFFLIN, INC

from Quill.com

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