Can I Reproduce Magazine Cover When My Product Is Featured?

Dear Rich: My product has been recently featured in a national magazine along with my company name. I've asked the magazine's permission to use their magazine name and the pictures that display my product, but they haven't responded. Could I use a picture of their magazine cover and state that my product was featured in their magazine on my ecommerce site without their permission? Wow, congratulations on getting some serious inka-dinka-doo and good luck with your product sales. Reproducing the magazine cover without permission is most likely an infringement of the copyright owned by the magazine, the cover artist/photographer, or both. But there are ways you can use it that can seriously lower your risks.
Copyright issues. The safest use (and one that would likely be excused) would be to use a thumbnail of the magazine cover -- something in the ballpark of the illustration size above. Recent cases have considered thumbnails as permissible fair uses, including a case in which magazine covers were used in a book. You can probably even claim fair use successfully using larger sizes, though we must always remind readers that fair use is a defense that you have to prove in court (a scary proposition). You can also consider another factor that we mention to Dear Rich readers. Will the magazine find out about your use and will they care? Obviously -- based on the zillions of unauthorized reproductions of product reviews -- many people in your position take this "stop me if you don't like it approach."
Trademark issues. We know that the writer of the magazine article endorsed your product (Yay!) but that doesn't necessarily mean that the magazine endorses your product and it may have a policy that asks readers not to associate the magazine's name with product or service advertising. Other magazines may have a policy prohibiting use of the logo or other trademarks in advertising. Check out the magazine's trademark rules (usually posted at its website or within the magazine) and look for any blanket prohibitions. As a general rule you should be okay with straight informational statements like "Our cool binoculars were mentioned in Bird Magazine and the writer called them "extraordinary." (You can probably include a few lines from the review without running into copyright problems.)

Will an Intent-To-Use Trademark Application Stop Theft of TM?

Dear Rich: Can I go ahead with website use and can I pitch an idea to licensing companies if all I have done is file an intent-to-use application at the Trademark Office? Is it considered intent-to-use if you don't plan on selling something yourself but you plan on licensing it? Short Answer: In your first question, we think you're asking whether there is a risk in using or exploiting your trademark while it is the subject of an intent-to-use (ITU) application. No, there's no risk ... in fact that's what you should be doing, assuming your uses match the goods and services in your ITU application. As for your second question, it will be considered an appropriate ITU if you plan on licensing it provided you can demonstrate your intent, as discussed in this article (and below)
No secrets with your ITU.  Keep in mind, there's nothing confidential about the ITU filing. Your advantage for trademark purposes is that you have priority based on your date of filing -- in other words, you can stop later users. As you're aware, the ITU application will only ripen into a trademark registration once the mark is used in commerce. So reserving the mark is a good idea but it will have no value if you can't demonstrate your use on the goods or services.
How do you show bona fide intent?  You can't simply list a group of goods and services in your ITU and expect that the USPTO will allow you to endlessly renew your ITU application. At some point, absent actual use, you will have to prove that you have a bona fide intent (BFI) to use the mark in commerce in the manner described in your application. Documentation is the key to proving your BFI. This documentation should be in the form of business plans, correspondence, product or service research, market research, manufacturing activities, promotional activities, steps to acquire distribution or licensing, expenses incurred towards your goal, and similar evidence. In addition, your BFI must exist for all the goods and services named in your application.
What's the TTAB have to say? The Trademark Trial and Appeals Board (TTAB) has held that "the absence of documentary evidence on the part of an applicant regarding such intent is sufficient to prove that the applicant lacks a bona fide intention to use the mark in commerce as required by Section 1(b)," Commodore Electronics Ltd. v. CBM Kabushiki Kaisha  26 USPQ2d 1503, 1507 (TTAB 1993). Our friends at the TTABlog have provided numerous examples of how these ITU cases play out at the TTAB. Check them out here, here, here, and here.

Wants to "Own" Shakespeare Phrase for Merchandise

Dear Rich: I have a plan to use a "theme" idea involving stories that were told to me by friends of mine at a retreat. I would use these stories in a book and title it with a quote from a Shakespeare play that fits the subject matter very well. I recorded and transcribed the stories and prepared the book proposal. I received permissions from the original participants and have developed stories beyond original telling and will use pseudonyms for the participants. My questions: (1) Can I use the Shakespeare phrase as title of book, in logo and brand, on cards, plaques, and entire product line? I searched the trademark database for phrase and there were no results. I grabbed .com domain name with phrase and there were no other domains using the phrase. (2) What do I need to do to "OWN" that phrase so that I can feel free to license it to appropriate product partners, or to enter into strategic partnerships with various companies to create gift packets with book and products, like candy and greeting cards. I also want to take the idea on the road to gather more stories after my website will launch and then once the book is published as the part of the book tour. (3) Do you think that I need a lawyer to guide me through these early stages so that the correct and necessary legal infrastructure is set in place to allow for graceful launch of this commercial universe? If so, do you have any referrals? 
All that glistens is not gold. Your plan is admirable and ambitious but we're always a little wary of attempting to plan the launch of a commercial universe all at once. We think it's usually better to take it step by step and see what works and what doesn't. With that caveat in place, here are the answers to your questions.
Good enough to call your own.  The idea of "owning" a Shakespeare phrase for merchandise is possible but it requires money and diligence. As you're aware, "ownership" of the phrase would require that you acquire trademark rights. (And as with all intellectual property rights, your claim will only have value if you have the money to go after those who infringe your trademark.) For each class of merchandise, you will need to register a trademark claim (between $275 and $325 per class, depending on how you register). So, candy would be in one class, greeting cards another, etc. By the way, if you register the phrase for greeting cards, that would give you the right to use the phrase for a line of cards; it wouldn't guarantee your exclusive right to use the phrase as the card's message. You can get the trademark registrations only by using the mark on the goods in commerce -- that is, you'll need to be selling the goods to get the rights. However, you can reserve the mark by filing an intent-to-use application, provided you have a bona fide intent to use the marks on the goods. Also, you cannot get trademark rights for a single book, but you can get it for a series of books.
What's in a name? As for using Shakespeare quotes for a book title, no problem, though you might want to check this site to avoid any confusion.
Let's kill all the lawyers. As for your last question, the Dear Rich Staff cannot refer you to any attorneys although there are many online sources for locating attorneys (including our employer's legal directory). As for doing the legal work yourself, that's always possible. Publishing the book won't bring up many legal issues and it sounds as if you have the necessary releases. More can be found in our Getting Permission book. As for the licensing deals, those probably will involve a lawyer and we would recommend contacting one once you have a solid offer in hand.

Can I Expose Exxon in My Documentary?

Dear Rich: I am making an independent film about life on our ranch with ExxonMobil. I had a blog for a few years and youtube page. For three years, I filmed lots of Exxon activities on the land that is owned by my husband. About a six months into my blog writing, ExxonMobil sued me for tortious interference saying "my shenanigans raised their operating costs" because they had increased inspections from regulators. So, I am aware of how they can be big bullies with their lawyers. However, when I was not intimidated, they just backed off and I kept filming and writing. I never got any releases from Exxon workers or subcontractors but I have the permission of the land owner (my family). Of course, everything has Exxon stickers, etc. I even interview the people working there. Exxon's partners (El Paso Corp) sued me for tortious interference and exposing trade secrets on my blog. But, we made an agreed judgement where those claims were dismissed with prejudice. I am planning to make my movie free and put it on iTunes and the Internet. I have this idea that free speech is more protected than commercial speech. But, I don't know if that is true and where I got this idea. I also think that people are less likely to sue me if they think there is no money in sales to fight over. What do you think? We admire anyone who has something to say and doesn't let other people stop them from saying it. But we're also protective of anyone who calls themselves a Dear Rich reader, so we'll provide the legal rules with a caveat that you're already probably aware of --  free speech will protect your rights, but proving you have those rights may prove to be a burden. There is some recent good news for you. Last month, Texas passed its version of an anti-SLAPP law (as explained here). Anti-Slapp laws even the playing field by stopping lawsuits that are used to censor speech. That law could prove helpful if the claims brought against you are trivial or have no legal basis. Anyway, here are the legal rules.

• Copyright - Because you did all the filming, we don't see much of an issue with copyright. If you are quoting from Exxon's written materials, using their photos, or video, that's an infringement but we think you have a strong fair use claim. However, as we always note, fair use can only ultimately be excused by a court which means you're spending money on lawyers.
• Trademarks - We don't see much in the way of trademark issues. The reproduction of trademarks in an informational film about Exxon is permitted under first amendment principles and we discussed those issues here. These rules regarding informational uses would protect you against claims for trademark infringement and trademark dilution. Our only suggestion would be to avoid modifying the logos.
• Privacy/Publicity Rights - Because your film is a documentary (and it's not a commercial endeavor), you may be able get away without releases as you are skirting right of publicity issues. However, without a release, the people portrayed in your film can possibly argue the film violates their right to privacy, or alternatively, it defames them. These aren't likely claims if you make a fair factual film, but as you know, employees who are concerned about retaining employment may regret their statements or wish to recant them. In your defense, you may be able to claim that their permission is implied by the fact that they talked to you and were aware of who you were, and that the material was being filmed. (In the future, you should consider getting a video release. While the camera is rolling, explain what you're doing and what the video will be used for and ask for authorization to use the material in your film. We explain more of these releases in our Getting Permission book.)
• Trade Secrets - You're familiar with this one. When you disclose confidential business information that you acquired by an unlawful means, a company can claim that you stole their trade secrets. So, if someone has stolen trade secrets from Exxon and they give them to you and you publish them, you could be enjoined (stopped) from distributing them. As you know, this is a gray area encouraging litigation because only a court can ultimately sort out what qualifies as a trade secret. 
• Contract Claims - You're already familiar with tortious interference -- when you're accused of coming between two parties to a contract to undermine their dealings with each other -- another gray area of law in which a he said/she said battle can drag on in the courts. Your settlement agreements may also establish some contractual limitations on your future behavior (although it doesn't sound like it from your description).
• Defamation/Trade Libel -- If you include untrue statements that cause harm to Exxon's business reputation (or to any of their executives or employees), you may expose yourself to defamation claims.
• Likelihood of Being Sued When There are No Profits -- You asked if you were a likely target if you had no profits. Profits probably only matter when discussing copyright, trademark and contract claims. And Exxon may not care about your profits, anyway. They may be more concerned about stopping the film (getting an injunction). You could be personally liable for defamation, right of publicity or other tort claims. Some people who make documentary films attempt to shield their personal assets by creating an LLC or corporation to produce, own, and distribute the film. 

Can Apple Stop Anyone From Using the Term 'App Store?'

Can You Own a Community Event?

Dear Rich: I'm on a non-profit board that puts on a race of human powered art machines. The non-profit was formed when “ownership” of the race was tied up in litigation and the artist who started the race asked a group of his friends to find a way to keep the tradition alive. The non-profit was formed, the event name changed and now we have been putting on the race for five years. Further, the non-profit has other fundraisers it does to fund the Memorial Day race. This year the artist’s son claims, as heir to his father’s estate, he “owns” the race and sent a cease and desist letter that we were putting on “his” race illegally. He has not used the old race name in 5 years. We don’t have much money for a legal battle around this, but can find no trademarking of events or races at the USTPO. Battles over who owns festival or event rights are almost always about who owns the name/trademark. (Here's a recent example and here's one from 2010.) It's possible that other issues may arise in these disputes -- for example, contract disputes (if agreements have been made between the parties) or claims of defamation. But in general, if the dispute is about who "owns" the festival, the dispute will come down to who owns the rights to the name and logo. Event names can be registered at the U.S. Patent and Trademark Office (to see examples, visit the USPTO site, choose Search Marks, then Basic Word Mark Search and type in "festival").
What About the Artist's Son's Claims? Because you're using a different name, we're not sure what claims the son may have. The idea of "owning" the race apart from the trademark seems like a weak claim unless there's a breach of an agreement or one party has interfered with a contractual relationship. (What was the result of the litigation?).  If the son is planning to use the same name you've been using for the event, you probably have a superior claim because of your five years of use.
What about the son's five years of nonuse of the trademark? Three years of nonuse of a trademark creates a presumption that the trademark has been abandoned. At least that's the rule for federally registered marks. That's just a presumption however and if the son can prove that during the five years he always intended to resume use, then his rights to the mark will not be considered abandoned.
Takeaway points. You should file a federal registration for your trademark (probably in Class 41). Often the success of an event hinges on the organizer's relationship with the government that issues the permits and the merchants who serves as sponsors. It's possible that if you focus on these relationships and maintain your name rights, you will be able to continue without hassle from others.

Using Movie Quotes on T-Shirts

Dear Rich: I read your blog advice about the "No Soup for You" question and you stated that short phrases can't be covered by copyright. So just so I am clear, if I create t-shirts using famous phrases from movies and TV shows, I don't have to worry about a copyright infringement, as long as I don't place an image on the shirt that is connected to the movie or TV show - is that correct? That's kind of close. You probably don't need to worry about copyright claims (although some movie quotes have been protected under copyright). When it comes to merchandise and short phrases we're more concerned about trademark issues (as per our follow-up question about Seinfeld). And as Dear Rich readers know, our real concern is whether the movie company will see your work or care. If we were a betting blog, we'd bet that you'll be fine with your shirts (sans any other movie references).

Can We Use Sam's Club Photo in Manual?

Dear Rich: I have a photo of a bunch of electrical conduit inside a main electrical room at a Sam’s Club. The store manager gave the person who took the photo verbal permission to use it for educational purposes. There is no way to tell that the photo was taken inside a Sam’s Club. It’s just a bunch of nicely installed electrical conduit inside a small room. I want to use the photo in some electrician training curriculum my organization is developing, and we want to sell the curriculum to a client. Your book talks about using photos people take of trademarks but not about photos of locations that can’t really be associated with a specific trademark holder or location. If we use the photo in our curriculum are we violating copyright law? The Dear Rich Staff is wondering why Sam's Club? Is there something about the store's wiring that makes it particularly photogenic? (Alas, the nearest Sam's Club is 47.1 miles away, so we're unlikely to find out.)
Right you had a question. Yes, you are free to use the photo of the conduits. Rules about trademarks in photos only apply if a company's trademark or trade dress or some other visual identifier is visible in the photo. Even if a trademark is visible in the photo, you can still use it without permission for informational purposes such as your instructional manual. (You can even caption it as originating from Sam's Club.) You will of course need the permission of the photographer (unless the photographer is your employee or has signed a work made for hire agreement). There's also the (very) outside possibility that the electrical wiring contains a trade secret -- that is, the manner in which Sam's Club wires its buildings provides an advantage over competitors. Even if that's the case, it should not be a problem for you as the store manager has permitted the photograph; it wasn't done surreptitiously.

Naked Licensing: Not Sexy at All

Dear Rich: What is a naked license? A trademark owner who fails to supervise a licensee and maintain quality control over the licensed products or services has created a “naked license.” A naked license may cause the owner to lose rights in the mark, a process known as "abandonment." And that's exactly what happened to the family that owned the "Eva's Bridal" trademark (Eva's Bridal Ltd. v. Halanick Enter., Inc.). The family licensed the trademark to two people to open a Chicago store. After the license expired in 2002, the owners of the store continued to use the mark but stopped paying the trademark license fees. The store owners claimed that they didn't need to pay; the mark had been abandoned because the owners had not maintained quality control (it was a naked license).
High quality vs. consistent quality. The trademark owners claimed they didn't need to supervise or maintain quality control because the bridal gowns at the store were of the same high quality (and from the same suppliers) as the other Eva's Bridal shops. In other words, quality control wasn't necessary because the store's goods were of high quality. The court responded that it wasn't "high" quality that was demanded; it was consistent quality -- for example, the kind of supervision that guaranteed the dressing rooms were clean and that the customer experience was consistent across the franchise. As the judge stated (cites omitted):

The trademark's function is to tell shoppers what to expect—and whom to blame if a given outlet falls short. The licensor's reputation is at stake in every outlet, so it invests to the extent required to keep the consumer satisfied by ensuring a repeatable experience

Takeaway Points Dept. A trademark license agreement should contain language assuring quality control and permitting the trademark owner to inspect products and services -- for example, many toy licensors require pre and post production samples. In addition, the trademark owner of a franchise operation, should perform personal inspections to guarantee consistency. (BTW, some other recent naked licensing cases are discussed here.)
How many times was the word naked used in the decision? On a Beavis and Butthead level, we counted three times (and we are hoping that word drives some additional organic searches to our blog).

Specimen for Blog Trademark: What Should I Submit?

Dear Rich: I want to trademark my blog name. I went to the USPTO to file online but am confused about what I am supposed to submit as a specimen? Help, please. Hi fellow blogger! Like us, you're providing "online journal" services ... so your specimen must identify those services and it must indicate their source. The screenshot above will give you an idea of what's suitable for a blog trademark specimen because (1) it shows the URL (where to locate the services on the web); (2) it shows the mark as used in commerce (and confirms that the mark -- Dear Rich --  is the same as in the application); and (3) it shows a means for people to contact the Dear Rich Staff. (Of course, your site wouldn't include the trademark registration symbol as you can only include that after the registration is granted.) The USPTO offers more information about service mark specimens. Although you can probably manage the online registration yourself, Nolo also offers online help  for those who need a little assistance in the filing process.

Can County Hassle TV Show Over Use of Seal?

click to see gruesome details

Dear Rich: A local government watchdog group put on a cable-access TV program where they used as their logo a spotlight shining on the seal of that government (Union County, NJ). On July 1, 2010 Union County submitted an application for a trademark on their seal and soon thereafter (9/17/10) the county counsel for Union County wrote a letter to the local cable channel telling them to stop using the Union County seal on the program since a trademark was pending. The letter is here. This is now the subject of a lawsuit described here. The question: can a government even trademark their seal? First of all, you failed to mention that the Union County seal is the only government seal in the U.S. that depicts a woman being shot. We thought it was some kind of misogynistic take on the Revolutionary War but it turns out that it's based on a real event -- the killing of Hannah Caldwell, a mother and homemaker from Union. We like the native-art illustration and wonder why the County isn't pursuing copyright infringement claims as well!
Right, you had a question. As much as the Dear Rich Staff supports the right of New Jersey county officials to hassle public access TV shows, we think the matter is moot (as the lawyers like to say) because the USPTO killed the county's trademark application last week. We have to agree with the trademark examiner who rejected the trademark application on October 18, 2010. She wrote:

Registration is refused because the applied-for mark consists of an insignia of a U.S. municipality. Trademark Act Section 2(b), 15 U.S.C. §1052(b); see TMEP §1204. Trademark Act Section 2(b) bars registration of marks that include the flag, coat of arms, or other insignia of the United States, any state or municipality, or any foreign nation. TMEP §1204.

You can read the complete rejection here. The County had six months to respond. We guess their tickler system malfunctioned because last week the trademark application was officially pronounced as abandoned. Here's the notice of abandonment. That's $325  in taxpayer money (not to mention county counsel expenses) down the drain! And in any case, even if the County has a protectible but unregistrable trademark, the TV show use is permitted under First Amendment principles.

Does NFL Sticker + Lamp = Infringement?

Dallas Cowboys Glass Table
Lamp from Fansedge.com

Dear Rich: I have what I think may be a complex question and hope you can help me. Let's say I build a custom lamp and I also sell licensed NFL stickers. My question is if a customer would like to purchase a NFL sticker and have it put on the lamp, is that an infringement on the logo? Short answer: It probably depends on who places the sticker on the lamp. If you affix it, you may get a cease and desist letter from the NFL. If the customer does it, you're less likely to have problems.
Isn't that arbitrary? Yes, it is. But in the eyes of the NFL, you become a seller of NFL merchandise once you offer to sell lamps with logos on them, whether it's done at the request of the customer or under your own initiative. By selling a kit, you're less likely to run into problems --  for example, like these tail gate party kits. It's true that the NFL offers kits to create things (including pumpkin carving kits) but you're in a better position for a few reasons, including the first sale doctrine. As a general rule you should avoid including the NFL or team names in your website name or URL, and a disclaimer - "This website is not affiliated with or endorsed by the NFL" - may also help.
Bottom Line Dept. As with so many Dear Rich questions, your inquiry has a lot more to do with how visible you are on the NFL radar screen. If we were you, however, we'd still feel more secure if we were selling the parts separately rather than assembled.

Is Star Wars Blog Illegal?

Star Wars Episode 12:
Revenge of the IP Lawyers

Dear Rich: I have a blog that I recently finished called Anikin's Blog. It was a spin off of the Star Wars movie series. I was, however, afraid of copyright infringments and thus refrained from spelling any copyrighted names correctly. I want to start a new blog about a Storm Trooper, but I figure I will get more traffic if I spell the names correctly and then can receive more Google searches. Is this legal considering the blog is non-profit? Can we start by clarifying one small point? Many people write to the Dear Rich Staff and state that their business is nonprofit perhaps because they think that fact will influence whether they are liable for infringing (it won't). Many readers believe that nonprofit means that their business doesn't profit. Not true. A nonprofit has a fairly specific definition; it is a business that qualifies for certain tax benefits and has registered as a nonprofit corporation. It may seem paradoxical but a nonprofit can make a profit, provided it plows those profits back into the charitable, scientific, or educational purpose for which it was created.
Right, you had a question. We're not sure about the value of your misspelled name strategy. We don't know if it shields you from Google searches or more importantly from Lucasfilm lawyers. In any case, in light of the zillions of unauthorized Stars Wars related blogs (at least seven of which claim to be the "official" Star Wars blog), as well as the galaxies of Star Wars fanfiction, Star wars podcasts, wikis, videos, and parodies, we think that a new blog about Star Wars Storm Troopers will be flying lower than a Gungan 'Bongo' submarine on the Lucasfilm legal radar screen. In other words, don't expect a cease and desist letter in the near future. That's not to say that someday, the Star Wars legal team will decide to clean house. But as a very general rule, the attorneys appear to reserve their legal muscle to go after those who seek to profit from unauthorized Star Wars products or those with high-radar trademark violations.

Wants to Use Magazine Imagery in Book

Dear Rich: I am writing a book about an art technique using a national magazine. I can illustrate the process using the magazine without actually showing any of it's actual images, (see picture) but I must use the name as it is the only magazine that will work with this process. I have contacted the company and so far no one has been able to help me. The other product that I use has given me permission and is going so far as to help me promote the book because it will help them. This would also be the case with the magazine. I will be adding value rather than compromising it. I will list them in my sources. Would this be considered fair use? Do I need to have their permission to use their name? This reminds us of when our cousin Andrew used to paste rubber cement on a piece of wood and then apply rubber cement to a magazine picture and press them together after they dried (and I think he ran water over it until the paper washed off). He ended up with a piece of wood with an image on it, except you could see the wood grain, too. Kind of an old-timey look. He priced them at $50 or $100. We were about 13 at the time and that seemed a lot to charge for something you made with rubber cement. He told me, "If you don't charge a lot, people won't take it seriously." He was so young to know that.
Right, you had a question. We think you will be fine using the name of your magazine within your book. That's a trademark issue not a copyright issue and editorial uses of trademarks -- for example, talking about a magazine in a how-to book -- does not require permission. A conservative approach would also be to add a disclaimer at the front of the book to the effect that you and your publisher have no association with the magazine and that all rights in the magazine vest in the magazine owner. If you use imagery from the magazine, you'll trigger copyright issues and probably need permission either from the magazine or, if the magazine doesn't own the rights, from the photographer or designer who created the materials you're using. We think selective uses of the magazine in the context of a crafts project would likely be excused as a fair use since it is clearly a transformative use, but as Dear Rich readers know, fair use is just another word for a lawsuit, because that's often the only way you can prove fair use rights. As for the fact that your book adds value to the magazine, that may or may not be true, but it probably won't have much effect on your claim of fair use.

Had Domain Name First! Do I Own Trademark?

Dear Rich: In 2008, I purchased a domain name for a service business I wanted to start (abc-company.com). I'm based in the US and did a variety of small jobs under that business name for a while but due to life circumstances wasn't really able to give the business my full attention. Recently, I decided to refocus my energy on this business and begin building it again. It turns out in 2009, somebody else registered a similar domain name (abc-company.net). They are based in the UK but have a strong US presence, and they have published a book by the same name (ABC Company) and given several popular talks under the same name. While I have the company's name on LinkedIn, they have it on Facebook. The nature of our work crosses over in many ways but our service offerings are different. Their company clearly comes up in the search results before mine and is currently more established than mine. Would the fact that we are in different countries affect the rights to who has the best claim on the trademark? Do either of us have a right to that trademark?  The Dear Rich Staff suggests you consider the following questions.

• Have You Established Trademark Rights? Your first question, regardless of the other company's use, is whether you qualify for a trademark. If yes, you may be able to claim a priority based on your earlier use of the name. Using a domain name doesn't create trademark rights. You have to use the domain name in a manner that customers associate with the business. For example, the original domain name for this blog was: patentcopyrighttrademarkblog.com, a URL that could never function as a trademark because it is the generic term for a blog about ... guess what? On the other hand, "Dear Rich" passes the test for "On-line journals, namely, blogs featuring commentary and information in the fields of patents, copyrights and trademarks." The fact that you stopped for a while may hurt you if you get into a spat and the other side argues that you abandoned the mark. But that's unlikely as abandonment typically requires three or more years of nonuse. 
• Have They Established Trademark Rights? The fact that you're in different countries may be sufficient to avoid a dispute, provided that each company caters primarily to consumers in their own country and is not concerned with what happens across the ocean. If your UK doppelgänger is expanding into American markets, they may file with the U.S. Patent and Trademark Office. You can periodically check Trademark Office records (here's a video explaining how) to see if the company has filed anything. You may object to the registration if you have sufficient basis.  Again, if the term is generic, it will be equally tough for the UK company to claim rights.
• Can You Both Claim Trademark Rights? That's possible if, like you say you offer different services. Many companies have the same or similar registered trademarks because the U.S. Patent and Trademark Office permits different companies to use the same mark if their services or goods are not likely to confuse customers (For example, nobody thinks that the people who make Arrow shirts also make Arrow staplers) 
• Do You Need a Registered Trademark? The longer that you both co-exist without any confusion, the more likely that things will stay that way and you won't have to be concerned about fighting over registrations. Here's a recent case about domain names where that issue came up. On the other hand, if  you're concerned about expanding your business or you just want to shore up your rights -- and you have $325 to file a federal application -- go ahead and file for a trademark but take a look at this information before doing so.

Should I Make Disclaimer When I File TM Application?

Dear Rich: I am applying for a trademark and I had a question. I want to use my trademark for a website for people who own daycare businesses. (I already have the domain name.) The trademark has the word "DayCare" in it and I know that I can't trademark that part of the name. Should I make a statement giving up rights to "Daycare" under the "additional statement" section. What do you think? You're correct that nobody who runs a daycare business can claim trademark rights to the word "daycare" -- it is a generic term for  businesses that care for kids. So most people who include it in their trademarks will have to disclaim it. As a general rule, most trademark attorneys would probably take the position that it's best not to disclaim anything unless asked to do so by a trademark examiner. The reasons for this blanket rule: (1) you can't always predict what the examiner will ask you to disclaim -- for example, though it's highly likely you'll be asked to disclaim the term, there's always the possibility that the examiner may not ask for it because you are providing online services (and not daycare services), (2) adding a disclaimer later won't derail your application (though it will slow the process), and (3) by taking the initiative yourself, you may mistakenly disclaim an essential element of your mark.
That Said Dept. That said, if you're certain that an examiner will ask you to make the disclaimer -- for example, your competitors have been asked to make similar statements in their applications (you can review all existing applications and registrations online) -- and you're in a hurry to get your registration, then make the disclaimer at the time you file the application. (The intake box is shown below).

Does drawing a trademark prevent getting sued for infringement?

Dear Rich: In response to your recent question about a children's book ... I have done a book for children that features some of their toys, but instead of using photographs of these, I have drawn them, so they resemble the toys. I believe there is no issue with trademark infringment. Can you please clarify this for me? For those readers who don't have time to wade through a few paragraphs, the short answer to our blog's question for today is "Not necessarily."
Please Don't Sue Dept. By way of example, today's thumbnail image, Ed Ruscha's "Large Trademark with Eight Spotlights," (a painting of the 20th Century Fox logo), does not infringe under trademark law because Ruscha is not using the mark to sell anything (other than the art work itself). It's referred to as an informational (or "editorial") use. It's generally fine to use most trademarks for such artistic or news purposes without worrying about trademark infringement but if the trademark has substantial decorative features, it is also protected by copyright (we explain the diff here).  Any reproductions might be considered infringing derivative works (unless declared a fair use).
Walking a Thin Line Dept. Where Ed Ruscha could run into problems would be if he licensed the use of his painting for t-shirts, merchandise, or for use in connection with films or TV shows. In that case, the use shifts from informational (artistic or news) to commercial and 20th Century Fox might argue that consumers are likely to confuse its products with those offered by Ruscha.
"That Said"Dept. In summary, the fact that you drew the marks may not shield you from a cease and desist letter. In addition, some users of trademark images lose the "editorial shield" when they modify the appearance of a trademark. That said, you should also factor in the bigger question of whether the trademark owner will notice your use (or care if they do notice). If the answers are "no" and "no" then you're good to go.

Art and Text Combinations: Copyright or Trademark?

Dear Rich: I have come up with several different art works and slogans that go along with the art work. This art work and slogans are directed towards a certain group of people that enjoy participating in a certain type of sport. After doing some reading, it appears to me that both the art work and slogan would be protected under a trademark. I know art work can be protected under a copyright but I don’t think that includes a slogan that goes along with the art work. So my questions are as follows: (1) Does a trademark protect both art work and slogans? (2) Can I submit 2 or 3 different art works and slogans under one trademark if they are all directed towards the same clientele and sport? (3) And if my applications are denied, do I get my money back? We're in a backwards kind of mood so we'll answer your questions in reverse order.
(3) No, you don't get your money back. The USPTO will not refund your $300+ application fee if your trademark application is rejected. That's why the Dear Rich Staff urges applicants to make sure that their trademarks avoid the three most common reasons for rejection: the mark is descriptive and lacks secondary meaning; the mark is the generic term for the goods and services; or the mark (or something substantially similar) is already being used in commerce by a 'senior user' for those goods and services. (We explain all three standards here.)
(2) No, you can't include more than one mark per application. The application and fee are "per mark," so you can't compile a bunch of marks and register them in one application.
(1) Yes, trademark will protect artwork combined with a slogan (and so will copyright). Let's start by talking about copyright. The art world, as well as the publishing, and advertising industries have long relied on copyright protection for art and text combinations. However, because copyright does not protect short phrases, the copyright for an art+text work usually doesn't extend to the text, by itself. So if someone were to copy just the slogan from the works, you couldn't stop that person (with some rare exceptions). Registering the combination as a trademark will only work if you plan to use the art+text as a trademark -- that is, as a signifier for specific goods and services. This can pose some tricky issues. For example, if you use your art+text combo on a t-shirt, the USPTO might reject your application because the mark is being used in a decorative manner. That is, people are buying and appreciating the t-shirt for the art+text. Even if you can claim it as a trademark for apparel, for example, you would still need to register it in each class of goods for which you seek protection ... an expensive proposition. May we recommend that you rely on copyright until one of your works enjoys exceptional success, then you can consider trademark registration.

Copyright and Trademark Issues for Expansion Pack for Game

Dear Rich: I read with interest your post "Do Not Pass Go: How to create non-infringing board games" and I have a related question regarding expanding existing games. I have created an expansion for a popular board game. I do not use any of the original game trademarks in my naming or design, and I don't replicate any of the original game's physical, visual, or textual elements. Can I legally market my game? You may be legally correct in what you're doing -- that is, you're not infringing any copyrights, trademarks, or patents of a famous board game -- but if the board game company perceives your work as chipping away at their potential revenue or trading off their famous trademarks they may sue first and ask questions later. Why is that?
Inside the mind of a board game executive. Perhaps it would help to imagine what happens if you put yourself into the mind of someone at the legal department of a big toy and game company ... for example, Mattel. Fade in on your office. You sit behind your desk, sipping a chai latte and looking at the framed posters of Chatty Cathy, Barbie, Tickle Me Elmo and several Hot Wheels vehicles while you sneak time to work on your screenplay. You quickly switch screens as your boss comes into your office to show you a print-out from a website. It's an expansion pack product for a Mattel board game. Your boss -- pleasant enough in the office, but a tough cookie in licensing negotiations -- says, "Memo Me Elmo" which means you better come up with a good legal theory for going after these guys because after all, this is business, and Mattel wants to earn any and all revenue resulting from the success of its games.
Your memo. You know there are a few legal cases related to these issues and you know that Mattel will have a legitimate claim against the expansion pack maker only if: (1) the game company can demonstrate that consumers are likely to believe that the expansion pack is endorsed by, affiliated with, or commercially connected with the game; (2) the game company can demonstrate that the expansion borrows enough copyrightable elements from the board game such that it is a derivative under copyright law; (3) the expansion pack somehow dilutes or tarnishes the trademarks of the famous board game. You study the advertising for the expansion pack at the website and look for references to your famous game's trademarks and then you buy a copy to examine the expansion pack in detail. A few weeks later, your boss directs you to send out a cease and desist letter. Fade out on legal counsel.
Takeaways.  Even if the law is on your side and your expansion packs may be legitimate products (subscription required), turf-protection by game companies may hinder or slow down your ability to get to market. We hate to stifle your creativity but you'll notice that the case law we cited was between well-heeled businesses able to take each other on. Otherwise, you'll be flipping through Yelp looking for an attorney.

Can We Turn Boston Red Sox into Zombies?

Dear Rich: I have come up with a couple of designs that depict the Red Sox baseball team as zombies, and before I start trying to sell them online, there are several points regarding Fair Use as parody that I am concerned about. First, is the use of the team's name at all permissable? My design's currently show the name "Red Sox" in a generic font, but the word "Red" is covered by the word "Undead", changing the term to "Undead Sox". The "Red" is still discernable. Is it necessary for me to remove the "Red" entirely? Second, I use modified versions of two logos. The Red Sox's Hanging Sox logo -- my version is an original drawing that includes a dismembered zombie foot in on of the socks, with several toes poking through a hole in the end of the sock. Also, the MLB logo has been modified to replace the baseball player silhouette with a zombie. Thus, both logos have been modifed from the original so that they are unique but clearly reference the original. Is that protected as parody under fair use laws? Third, I use a modified version of the MLB name. In my artwork, it is altered to read Major League Zombies or MLZ. Again, is this permitted as parody? Short answer dept. If your concept is successful, you'll probably get sued by the MLB. If you can afford to defend the lawsuit, you might win; then again, you might not.
Trademark parodies. What you need to keep in mind is that you're dealing with trademark parodies, not copyright parodies so the copyright concept of "fair use" isn't really relevant (and we're not going to address trademark fair use which is an entirely different animal.) Here's a previous post on the subject and here's a good explanation of the trademark parody rules. Keep in mind that to create a true trademark parody, you must convey contradictory messages: you want people to think of the MLB, but you also want people to see your use as a parody that's not connected with the MLB (Chilling Effects elaborates on that distinction here -- scroll down for the explanation).
Why will you get sued? Famous companies typically sue over parodies under a trademark theory known as dilution. When you dilute, people think less of the mark because you've tarnished its famous reputation. Even if a company believes you have a good free speech defense, the company may proceed with the lawsuit because it has more money to spend on the lawsuit and is more likely to force you into a settlement. If we were to analogize to the world of zombies, the MLB lawyers will want to devour your grey matter.