Category Archives: Legal File

Trademark Basics, Part Two: How Trademark Searches Can Keep You Out Of Legal Hot Water

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(L-R): Kelly Donohue and Radhika “Ronnie” Raju,

By: Kelly Donohue and Radhika “Ronnie” Raju, Wilkinson Barker Knauer, LLP

In our last article beginning this series on Trademark Basics, we gave an overview of trademark basics and discussed why building up a strong trademark portfolio should be an important part of any media company’s overall business strategy. This week, we will discuss why identifying marks that you may use must be a key feature of your branding strategy. The reason is simple – you don’t want to invest thousands of dollars in a mark – building websites and social media campaigns around it, promoting it on air, creating bumper stickers, calendars, t-shirts, and other swag – only to get slapped with a demand letter from someone claiming that it owns the rights to that mark. That user can potentially force you to cease using the mark on air and online, destroy all physical materials that use the mark and pay damages for your infringing use of the mark. This development could blow a station’s marketing budget in the blink of an eye. Thankfully, this scenario is avoidable by doing some advance sleuthing before committing to a mark. So, what steps can you take to stay out of legal hot water?

There is a common misconception that, once you register a trademark at the federal level, you are “protected” against any claims of infringement. As a result, many companies skip the sleuthing and simply file a federal trademark application when they adopt a new mark. This is a very dangerous practice that could potentially cost you in the end because the application might be rejected by the Trademark Office or opposed by someone with prior rights in the mark. Indeed, even if a mark is federally registered, someone with prior rights has five years in which to challenge your use or registration of the mark. In order to minimize these possibilities, it is critical that, before you settle on a new mark, you conduct a trademark search. Running a search will allow you to see what, if any, other parties may have rights in marks identical or similar to your proposed mark. What does this entail, exactly?

Some searches are simple and can be done by your marketing or operations team – simply log onto the USPTO’s database (called “TESS”) and plug in the proposed mark. This type of search will help you quickly identify any obvious impediments. If a similar or identical mark pops up for the same or similar services, then the sleuthing is over – your proposed mark has been “knocked out” by the registered mark and you must move on to your next mark.

However, the analysis of these searches can get complicated very quickly. What if one or more similar marks are registered for similar services? What if an identical mark is registered, but for somewhat different services? What if the search identifies a mark that differs from your proposed mark by a single word or has the same words in a different order? What if there is a registered mark for the identical services, but an Internet search locates no use of the mark? What if the mark is federally registered, but an Internet search indicates that the mark is only being used in a limited geographic market that is not near your area of proposed use? An experienced trademark lawyer who is familiar with interpreting these results may be needed.

Moreover, even if your proposed mark is “clear” at the federal level, your sleuthing is not yet over. In the US (unlike most other countries), someone who is using a trademark or service mark, but has not registered it, has what are called “common law rights” in the mark. Those rights are limited to the geographic area in which the mark is used and the services are provided. The prior user of an unregistered mark that is similar to yours could preclude you from using your mark in its market, even if you federally register your mark.

As you can see, the simple act of “clearing” a trademark is rarely simple. Many trademark-savvy companies will run a quick preliminary search in-house, but if a mark is not clearly “knocked out,” will turn to counsel to run what is called a “comprehensive search.” These searches, while not totally foolproof, identify similar or identical marks at the federal, state, and common law levels, and can also search business names, domain names and in some cases, marks registered internationally that could lead to a claim of trademark rights in the US. Practiced trademark attorneys vet hundreds of marks per year and can help you assess the level of risk associated with the adoption of a proposed mark by analyzing these search results. They may also identify reputational risks that you may not have considered, e.g., if your proposed mark is being used by an adult-themed website, is slang for something you weren’t aware of (for example, the former SciFi Channel’s “text-friendly” rebranded name “Syfy” also turned out to be slang for syphilis) or otherwise has negative connotations you hadn’t considered. If, however, your mark “clears” a comprehensive search, you can feel fairly confident that you have picked a mark that presents a low risk. Often clients have “fallen in love” with a mark that has some level of risk associated with it, but, if a search is conducted, at least that risk is assumed with eyes wide open and can be factored into the company’s business strategy and legal budget.

The costs of conducting trademark searches are relatively low when compared to both the reputational and the monetary costs associated with rebranding or otherwise defending an infringement claim. So don your best detective hat and get sleuthing! In next week’s Trademark Tuesday installment, we will discuss the benefits of federally registering your marks, and how to go about doing so. There is much more to it that meets the eye! Part three of this series will be in the next MAB News Briefs.

Reprinted  by permission.

 

Trademark Basics for Media Companies, Part One: What Trademarks Are and Why They Matter

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(L-R): Kelly Donohue and Radhika “Ronnie” Raju,

By: Kelly Donohue and Radhika “Ronnie” Raju, Wilkinson Barker Knauer, LLP

In today’s digital economy, trademarks are often the most valuable assets that a business owns. For example, in 2015, Google’s trademark portfolio was estimated to be worth $76 billion, which constituted almost one third of the entire value of the company. Microsoft clocked in at $67 billion, with Verizon close behind at almost $60 billion. While you may not hit 11-digit figures like these intellectual property behemoths, a smart trademark strategy can put you on the right course. This blog is the first of a five-part series that will help you understand trademarks and how they function, so that you can maximize the value of your own trademark portfolio. We’ll run the other four articles in the weeks to come. So keep reading!

So, what is a trademark? A trademark identifies products or services as coming from a particular source. Although a trademark is usually a word, a phrase or a design, it can also consist of or incorporate features such as color, smell, taste, shape (product configuration), touch, motion and sound. But not all trademarks are created equal. A strong mark can preclude the use by others of somewhat similar marks for goods and services that may not be directly competitive. In contrast, a weak mark may only be entitled to protection against the use of an identical mark for the same goods and services. How do you select a trademark that will most effectively help you build your brand?

The equation is simple: the more distinctive the mark as applied to a type of goods or services, the stronger it is and the easier it is to register and protect. There are five categories in which trademarks can be classified, listed below from strongest to weakest:

  • Fanciful or coined marks are terms that are made up and have no meaning other than as a trademark. These are the strongest kind of mark and offer the broadest scope of protection. Examples of fanciful marks include KODAK for film, EXXON for gasoline and VIACOM for broadcasting services. The disadvantage to a fanciful mark is that it takes more marketing resources to help consumers remember and associate the mark with a particular company and create brand awareness.
  • Arbitrary marks are common words that are found in the dictionary, but do not have any connection with the goods or services that they brand. Famous arbitrary marks include APPLE for computers, LOTUS for software and FOX for television broadcasting services. As with fanciful or coined marks, arbitrary marks receive a broad scope of protection.
  • Suggestive marks suggest some feature or advantage of a particular product or service, but do not immediately describe the goods or services. It requires some thought or imagination for the consumer to reach a conclusion as to the goods or services. Examples include COPPERTONE for suntan lotion and GREYHOUND for providing transportation by bus.
  • Descriptive marks immediately convey some aspect of the goods or services. Examples include PARK N’FLY for airport parking lot services and YOUR #1 ROCK STATION for radio broadcasting services. Descriptive marks are entitled to no protection unless the owner of the mark can show “acquired distinctiveness,” which we wrote about here in connection with questions as to whether the podcast SERIAL could trademark its name. This showing can be made in a number of ways, such as a consumer survey, establishing exclusive use of the mark for at least five years and detailing the extensive advertising efforts that have been undertaken to create brand awareness among consumers.
  • Generic terms are words that are the common name of a particular category of goods or services, such as APPLE for apples or NEWS STATION for broadcasting services. Generic terms are incapable of functioning as trademarks and can neither be registered nor appropriated to the use of one owner. Sometimes previously strong trademarks become generic due to an inadequate protection strategy of the owner. If consumers come to understand the trademark to be the name of the product itself as opposed to identifying an exclusive source of the products, the mark essentially dies. Examples of this include aspirin for acetylsalicylic acid and escalator for a moving staircase.

Now that you have a better understanding of what trademarks are, why are they so important? In today’s world, where attention spans are reduced to the size of a Twitter feed, companies now more than ever need the ability to catch the consumer’s eye and cut through the crowded marketplace. A good branding strategy can help you convey a range of information, from price point to target audience to the types of goods and services you are offering. Likewise, it can help boost your online presence – having a consistent, thoughtful branding strategy across your media platforms and social media feeds can help your customers find you quickly. Finally, a good brand can lead to new licensing opportunities and revenue streams.

So, when you are choosing a mark, make sure that it is distinctive and strong, or otherwise be prepared to spend time and money convincing the Trademark Office or a court that it is protectable (and potentially fending off potential third-party uses of the mark; after all, if it is descriptive, others may feel that they can use it freely!). Consider how you use the mark online, on your website, social media, etc. to make sure you are branding across all of your online properties consistently. And finally, make sure you are keeping track of your trademarks, as these are valuable assets that can grow in value over time (like real property, they can be bought, sold, licensed, used as collateral, etc.). Also, make sure to have a trademark attorney conduct a clearance search before you start using the mark, to ensure that no third parties are already using and/or have already registered the mark. The last thing you want is do is to spend valuable time and money plastering your new mark all over your media outlets (commercials, websites, flyers, etc.) only to find that someone else had first dibs on the mark, forcing you to re-brand and go back to Square One. We will help you avoid this pitfall in our next installment, Trademark Basics, Part Two: How Trademark Searches Can Keep You Out of Legal Hot Water.

Reprinted  by permission.

 

Looking at the Election Results and the Future of Washington Policy For Broadcasters

David Oxenford - ColorBy: David Oxenford, Wilkinson Barker Knauer, LLP
www.broadcastlawblog.com

This post was written on November 9, 2016

Before the November 8 election, in some of the legal journals that circulate in Washington, there was much speculation as to potential appointees to various government positions after the election. For positions such as the chairman of the FCC, many of these publications listed familiar DC names as likely appointees if, as expected by most pundits, Hillary Clinton was elected president. On the Trump side of the leger, speculation was much vaguer, as few had any real insight into how his administration would implement the broad but, in many cases, imprecise policies that Mr. Trump expounded during the election. Given the results of the election, those speculations are sure to ramp up as everyone tries to guess what will happen with broadcast policy in a Trump administration.

At this point, we can only speculate as to what that election will mean for broadcast policy – particularly at the FCC. One would certainly expect a lessening of the regulatory burden on broadcasters – as lessening burdensome regulations on businesses was a clear plank of the Trump agenda. The make-up of the FCC will likely facilitate such changes, as Republicans will no longer be in the minority at the FCC. A third Republican will join Commissioners Pai and O’Rielly on the FCC. These two Republicans dissented on many issues of importance to broadcasters – including the recently concluded Quadrennial Review of the Ownership Rules. Thus, a third Republican vote could have changed the decisions on many issues.

At this point, it would be speculation as to who will be appointed Chairman, essentially controlling the agenda of the FCC. But, at times like these, speculation is what people in Washington do. One name that has central to a Trump FCC is Jeffrey Eisenach, a visiting scholar and Director, Center for Internet, Communications, and Technology Policy at the American Enterprise Institute, a conservative “think tank” in Washington, who has been associated with the Trump transition teams planning for the possible transition of power. One of the existing Republican Commissioners will likely become Acting and potentially permanent Chair, and new names for FCC vacancies will likely arise in the near term.

Planning for a Republican administration may well change the thinking about how to proceed on many of the issues now on the table for broadcasters. The fight over the Ownership Rules, for instance, might be subject to reconsideration, asking the new Commission to reverse the decision that was handed down in August. That could replace the current strategy of an appeal to the Courts which, even if successful, would likely result in a remand to the FCC to adopt rules in line with the Court’s order. The appeal that the NAB has announced that it is pursuing could be abandoned if there was an indication that a new FCC would see things differently than the old one. Of course, the President-Elect Trump’s expressed hostility to big media companies is a wild card in this calculation. Other paperwork requirements, from EEO rules to public file obligations, could also be reviewed under a new administration.

FCC reform generally has been a signature issue of the Republican Congress, so such reform could advance under a government where Congress and the Administration are all under Republican control. Signature issues under such reform proposals have included more transparency in decision making, more rapid decision making, and requiring more economic analysis of the effects of any new regulation on those being regulated to make sure that the regulation is justified.

Question marks for broadcasters include antitrust policy, where candidate Trump has indicated some concern with businesses, including those in the media space, from getting bigger. Reform of libel laws (about which we wrote earlier this week) so that public figures have more avenues to pursue defamation actions, have also been advanced by the President-Elect.

Obviously, we are one day into a new reality, so this is still very much a developing story. We’ll be watching, and broadcasters need to be watching too.

David Oxenford is MAB’s Washington Legal Counsel and provides members with answers to their legal questions with the MAB Legal Hotline.  Access information here. (Members only access).

There are no additional costs for the call; the advice is free as part of your membership.

Three Last Minute Political Issues for Consideration by Broadcasters

David Oxenford - ColorBy: David Oxenford, Wilkinson Barker Knauer, LLP
www.broadcastlawblog.com

We’re down to the last week before the election, but broadcasters can’t let up quite yet, as the last week is almost always the busiest for political advertising. Candidates, PACs and other groups try to get the last word before the voters go to the polls. Here are three issues that broadcasters should be considering in these last days before the election:

  1. Weekend Access. The FCC has said that if a station has, in the year prior to the election, made its employees available to a commercial advertiser for new orders or changes in copy, they need to make employees available for those activities to political candidates. Even if the station completely shuts down on the weekend and no salesman ever signs a deal with an advertiser during a Saturday golf outing and no weekend employee ever agrees to change the copy on a big advertiser’s spots, the station may still need to make employees available during the last weekend before the election to allow candidates to exercise equal opportunity rights, which brings us to number 2.
  2. Practice Inventory Management. In these last days before the election, there will be many demands on the commercial inventory of many stations and stations will need to be careful in managing that inventory. Remember, all candidates have the right to buy equal time to the time bought by opposing candidates in the last 7 days. While candidates cannot sit on their equal opportunity rights until the last minute, equal opportunity buys placed in the first part of next week probably need to be accepted. Plus, you may be getting demands from candidates for new time and requests from PACs and other political advertisers, so be sure that you have practiced wise inventory management so that there is room for all of the spots that you are obligated to run. Be particularly careful about selling a new schedule this coming week to a candidate, as the opposing candidate will need to be able to get his or her equal opportunities before Election Day – even if it means signing contracts and adding spots to the traffic system over the weekend – even if you have never in the last year been open on the weekend for a commercial advertiser.
  3. Be Prepared for Take-Down Demands. In the last days before the election, the ads are no doubt going to get nasty, and some may trigger take-down notices from candidates who are being attacked in the ads. Remember, if the attack ad is run by a candidate’s authorized campaign committee, you can’t censor the ad based on its content. That means you are legally forbidden to pull the ad even if it lies about the opponent. But, ads bought by PACs and other non-candidate groups can be refused based on their content. So you need to carefully evaluate the claims made by the party demanding that the spot be pulled, as if the claims made in the spot are in fact false and defamatory, the station could have liability for continuing to run the non-candidate attack ads after receiving notice demanding that they be taken down. We wrote more about this subject here.

Soon it will all be over and your station will be back to simply dealing with its normal commercial advertisers. But, for the next few days, be prepared for the onslaught of political issues, and have your communications lawyer’s phone number on speed dial!

David Oxenford is MAB’s Washington Legal Counsel and provides members with answers to their legal questions with the MAB Legal Hotline.  Access information here. (Members only access).

There are no additional costs for the call; the advice is free as part of your membership.

What Could Possibly Go Wrong With a Broadcast Contest? – From the Legal Side

David Oxenford - ColorBy: David Oxenford, Wilkinson Barker Knauer, LLP
www.broadcastlawblog.com

Recently, our friends at the broadcast and digital media consulting and research firm Jacobs Media posted an article on their blog called What Could Possibly Go Wrong,” dealing with the financial and reputational issues that can arise if a contest is not fully thought out. That article reminded me of all of the legal issues that we have written about over the years that can arise if all of the issues with a broadcast contest are not carefully considered. Those potential issues range from an FCC fine if the contest is not conducted as advertised, to the threat of civil liability if the contest results in an injury to a contestant or observer. I thought that I would highlight some of the articles that we have written in the past to remind broadcasters of those potential liabilities.

On the FCC side, the FCC has always been a stickler on the rules, requiring that broadcasters, when conducting their own on-air contests, announce the rules of those contests and to follow those rules as announced. While that burden has become somewhat lighter in the last year as the FCC has allowed stations to publicize the material rules of a contest on a station’s website rather than having to announce them on the air (as long as the online location of those rules is, itself, publicized sufficiently on air, see our post here), that rule change has not affected the underlying obligation of a broadcaster to conduct the contest as announced, in accordance with the contest’s announced rules.

We have written many times about FCC fines imposed on broadcast stations that announce rules for a contest and then don’t conduct the contest according to those rules. These issues can include not properly identifying the prize (e.g. this case that fined a station for announcing that it was giving away a car when it was actually giving away a two-year lease for a car, a decision that discussed another case where a station was giving away passes to a movie opening without disclosing that it was possible that there would be insufficient seats in the theater to accommodate all pass holders). Broadcasters, in planning a contest, need to anticipate all possible eventualities, from tie-breaking methods in case multiple people qualify for a grand prize, to anticipating the potential that a prize will not be available when the winner comes to collect it (e.g. that the concert tickets that you are giving away is to a concert that gets cancelled after a winner has been selected). Always give the station an “out,” for instance, by allowing the substitution of a prize of equal value should the award of an announced prize become unavailable.

Even ambiguities in the rules can lead to fines. See our article here about a fine on a station for saying that entries would be accepted “through” a particular date, when in fact the deadline was the previous day, as the award was to be made on the announced deadline date. That article also provides some thoughts about the process of drafting contest rules. In another case summarized here, a fine was issued when the rules of a contest stated that there was to be one winner, but also included boilerplate language lifted from the rules of another old contest that implied that there would be multiple winners – and a listener claimed to be confused about how many winners would be selected. That article also talks about a fine issued to a station that dragged its feet in giving away the prize that a listener had won.

Similarly, know that you are conducting a contest and make sure that everyone at the station knows what the rules are. See our article here about one case where a prize was to be given to someone who called in to the station with a correct answer to a question that was posed on the air. When a caller called with the correct answer, the announcer decided out of the blue to ask the caller another question before the prize would be awarded, even though the rules did not provide for that second question. That article describes the even more bizarre case of an announcer who was bored while on the air over a holiday weekend and he decided to spice things up by announcing that the station was giving away a million dollars when in fact it was not – and listeners complained to the FCC when they did not get their million dollars after they called the station. In both cases, the FCC imposed fines on the stations.

We’ve also written about the potential civil liability for a contest that puts contestants at risk of physical harm. The article describes some of the take-aways for broadcasters from the well-publicized contest “hold your wee for a wii” where the idea of the contest was that contestants had to drink water and the winner of the Nintendo Wii was the last to have to use the bathroom – which led to the death of a contestant as the result of water intoxication. Any contest involving physical feats or races to get somewhere fast need to be carefully thought out, as the promoting station could be looking at potential liability if injuries to contestants or bystanders result.

Even how you conduct the contest can raise issues. Under the Telephone Consumer Protection Act (the “TCPA”), sending texts to persons who have not given their explicit consent to receive automated commercial messages can result in big fines. We wrote here about some of the issues broadcasters should consider in conducting contests or promotions that involve text messaging.

These are but some of the many legal issues that can arise if broadcasters are not very careful in conducting their on-air contests. We haven’t even talked about carefully following state laws to make sure that your contest is legal where it is conducted; about disclosing the odds of winning (if, for instance, the contest is being broadcast on multiple stations, making sure that listeners know who they are competing against); or the issues that can arise if outside contest companies don’t fulfill on their obligations (e.g. some situations have arisen where broadcasters hire third parties to conduct a big contest, thinking that the company has adequate resources to give away a big prize if there is a winner, only to find out that the company did not in fact have the resources to pay out when a winner won big). There are many, many other issues that can arise. While we don’t want to ruin everyone’s fun, any business, and particularly one as high profile as the broadcast industry, needs to conduct their contests very carefully. So consult legal counsel for the details to avoid having these legal issues become the real answer to the question of “what could possibly go wrong?”

David Oxenford is MAB’s Washington Legal Counsel and provides members with answers to their legal questions with the MAB Legal Hotline.  Access information here. (Members only access).

There are no additional costs for the call; the advice is free as part of your membership.