A brief look at trademarks
A standing-room-only audience attended a workshop on trademarks, hosted by the California Lawyers for the Arts (CLA), Tuesday, July 31, at the Sacramento Business Journal office. The workshop was presented by Mark R. Leonard of the law firm Davis & Leonard. He specializes in trademarks, trade secrets, copyrights and intellectual property.
Leonard defined trademarks and said that they can include words, phrases, symbols and even colors. He pointed to the use of pink in Owens Corning insulation. Additionally, the shape of a product or even sounds can be a trademark. Trademarks differ from copyrights but can overlap with copyrights, as some logos may be protected by both. Trademarks, however, cannot be isolated from the goods or services offered in connection with the mark, while copyright law does not have a similar requirement.
Not all trademarks can be protected. Some, like “thermos,” “escalator” or “aspirin” were originally trademarks, but have become generic through public use. Others like “cranapple” for a cranberry apple juice drink or “apple valley juice” for apple juice from Apple Valley, Calif., are deemed highly descriptive because they describe the product the mark is used with.
Leonard outlined the importance of conducting searches, and noted that the secretary of state’s approval of a business name does not mean that a person has clearance to use the name as a trademark. “Conflicts,” he said, “may not be readily apparent,” and discussed how to assess potential conflicts. For example, a similar mark that is used on related goods or services may produce a conflict. He also noted that phonetic similarities can create conflicts, so a phonetic search is very important, but often not performed unless a trademark attorney is doing the search.
The reasons for registering the trademark, even though rights to the name are acquired at the time of use, were provided, and included the use of the ® symbol, and the right to use the mark nationwide and for all-important defensive benefits. Use of a mark in interstate commerce, Leonard told the group, is required for federal registration.
Fair use of another’s trademark was illustrated through commercials that compare one product to another, like Coke versus Pepsi, or when using another’s mark descriptively. Additionally, under the First Amendment, artists and writers may use trademarks in certain ways. Parody is often confused with satire, according to Leonard, and only parody is considered a fair use.
“Just because it’s funny doesn’t mean it’s a parody,” he said. “To be a parody, it must poke fun at the original.”
He described a situation where “The Cat in the Hat” was used to poke fun at the O.J. Simpson trial, rather than at Dr. Seuss. That, Leonard explained, is satire, and does not qualify as a fair use. A collage of photos of a famous person is considered artistic, not trademark infringement. There might, however, be copyright issues with the use of the images.
Attendees included microbrewers, musicians, lawyers, law students and visual artists. Their questions led to definitions for even more terms that most will still need to look up.
Perhaps the most amusing moment, even funnier than the Victor’s Little Secret story, was that of Koala Tea. The filer of the trademark was asked if the product was made from koalas or intended for use by koalas.
Throughout the two-hour program, Leonard recommended several websites and strongly urged people to seek legal advice at some point before attempting to register their trademark. Several people nodded their agreement with his suggestion.
Mr. Leonard volunteers his time to present programs in these areas to artists and authors through nonprofit organizations like CLA.
CLA is a nonprofit organization that offers three core programs, according to Lisa Camhi, the organization’s program coordinator. Educational programs, including workshops, seminars and webinars, are offered in several California locations and via webinars. The lawyer referral service can locate an attorney specializing in an area of need. The mediation program is available to assist in disputes with gallerists or illustrators, for example.
Additional resources include community development programs, arts advocacy and resource libraries in San Francisco and Santa Monica. Membership is reasonable, and provides many discounts and additional benefits.
The next Sacramento workshop is Contract Basics for Creative Artists, and will be held on Tuesday, Aug. 28 from 6:30 – 8:30 p.m. at the Center for Contemporary Art, Sacramento, 1519 19th St., Sacramento.
Each attendee left with more information, and probably more questions, about trademarks, and a complimentary copy of the Sacramento Business Journal.