MediaTech Law

By MIRSKY & COMPANY, PLLC

Actual Halloween (Trademark) Story (Part 2): “Field of Screams”

Posted October 3, 2011 by Kate Tummarello 0

In March of this year, the U.S. District Court for the District of Maryland denied the preliminary injunction that the Pennsylvania “Field of Screams” had sought against the Maryland “Field of Screams.” Andrew Mirsky wrote about this case last fall, a trademark infringement action involving a haunted amusement house in Pennsylvania operating under the name “Field of Screams” and a Maryland operation of the same name.

The court’s opinion denying the preliminary injunction can be viewed here.  The preliminary injunction was denied on the grounds that the plaintiff was unable to show that its case was likely to succeed in court – the standard required to obtain a preliminary injunction.  

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Trademarks: Apple Still Fighting “Video Pod”

Posted August 21, 2011 by Andrew Mirsky 0

Sector Labs, a California company that makes a smartphone-size video projector, filed a federal trademark registration in 2003 for the name “video pod”.

Apple, Inc. challenged the registration, filing an opposition to Sector Lab’s registration with the U.S. Patent and Trademark Office.  Apple claimed (among other things) that Sector Labs’ “video pod” “is extremely similar to Apple’s [“iPod” trademarks]”, “consists in part of a significant portion of [iPod] and the entirety of POD, which consumers use as an abbreviation to identify and refer to Apple’s iPod mark and products”, and that Video Pod “covers a device that is or will be used to transmit video for entertainment and other purposes” – much like Apple’s iPod.

Apple’s legal position is that Sector Labs registration would cause source confusion, namely a likelihood of confusion among consumers as to the source of the two companies’ products, and trademark dilution.  Or in other words, “video pod” would dilute the value of Apple’s iPod franchise by reducing the exclusive association in the marketplace of “pod” with Apple and its ubiquitous iPod.

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Facebook Trademarks “FACE” – HOW?

Posted December 1, 2010 by Andrew Mirsky 0

(Thank you to Thomas Yarnell for contributing to this post.)

It’s one thing for Facebook to claim that a website called “Teachbook” infringes upon the “Facebook” trademark. That seems reasonable. But what about when the social network seeks to trademark both the words “FACE” and “BOOK”?

Last week, Facebook took a big step toward securing the first half of its name, as the company received a Notice of Allowance from the US Patent and Trademark Office for the word “FACE”.  Unless something extraordinary happens between now and the pending issuance, soon Facebook will own a registered United States trademark to the word “FACE”.

To be clear, Facebook’s exclusivity is limited to its defined field, namely:

telecommunication services, namely, providing online chat rooms and electronic bulletin boards for transmission of messages among computer users in the field of general interest and concerning social and entertainment subject matter, none primarily featuring or relating to motoring or to cars.

So, on the one hand, exclusivity is narrow.  And this is important, because while Apple Computers owns trademarks for “Apple”, those are limited to computer and electronic products.  

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Trademarks: Why Necessary to Police Infringement of Your Marks

Posted November 7, 2010 by Andrew Mirsky 0

A little-appreciated requirement for trademark owners is a duty to monitor and police their trademarks.  This duty applies to owners of unregistered trademarks as much as federal registered marks, since registration is not necessary to claim many trademark rights.

What types of activities must be monitored and policed?  Infringement and dilution.  Or in other words, any third party uses of the same trademark or confusingly similar versions that might cause confusion in the marketplace about the source of the goods or services represented by the trademark.

Trademark Duty to Monitor and Police

2 basic reasons to monitor and police: First, the government won’t do it for you.  The Trademark Office is actually quite explicit about stating this, see here.  Second and more to the point, unchallenged third party uses of a trademark could legally – and actually – weaken the strength of the trademark as an identifier of the owner’s goods or services, which in turn weakens the owner’s ability to later enforce the trademark and devalues the worth of the mark.

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Trademark: When NOT desirable to register a trademark?

Posted October 29, 2010 by Andrew Mirsky 0

(Thanks to Neal Seth of Baker Hostetler and Michael Steger of Law Offices of Michael Steger for input on this question.)

“Can I register a trademark for my brand?”  That’s typically the first question asked of a trademark lawyer.  The second question – not always asked – might be “Why would I want to?”  Or rather, is it really advisable?

There is little downside to filing a trademark registration, unless you consider cost and time of little worth.  That aside, there may be little or no business benefit from doing so.

Take for example, a professional services business using the names of the partners, say a law firm or accounting firm.  That’s not to say that Richard Sears and Alvah Roebuck had no value in their names and wouldn’t have benefited from trademark protection, but only later when “Sears Roebuck” long-survived and became distinct from the original proprietors.  Until then, there was nothing to stop Ralph Sears and Bob Roebuck from partnering in accounting under the same name, and trademark protection for the mail-order business wouldn’t have stopped the CPAs from doing so.

A trademark may have little value to the business.  A retail business operating in one or few local locations only has nothing to gain from trademark protection, since out-of-town challengers to its name pose no threat to its business.

Similarly, generic or descriptive company names cannot even be registered under trademark in the first place, or at best only under the trademark office’s supplemental register (rather than the Principal Register), with its very limited protection.  An example might be “New York Trucking Company”.  (For a nice comparison of the Supplemental and Principal Registers, see here.

Another example is a case where you might be able to register the mark, but you have no real intent or interest in enforcing.  As Neal Seth pointed out, “You don’t need to register if you are not going to enforce it.  In other words, you might not care if somebody else uses the mark.”  It begs the question of what value you would get in the registration – and why spend the time and money to register – if you’re not going to enforce.

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Actual Halloween Story: Trademark “Field of Screams”?

Posted October 25, 2010 by Andrew Mirsky 0

Yes, possibly the most important lawsuit since the sad case of the hamburger joint sued by the Washington white shoe law firm, playing now at a theater on Connecticut Avenue.

Well, maybe the most important lawsuit in trademark’s hoary world.

“Field of Screams” – Maryland version – is the annual Halloween fundraiser put on by the Olney (Md.) Boys and Girls Community Sports Association.  “Field of Screams” – Pennsylvania version – aka Field of Screams LLC, filed suit for trademark infringement in Maryland federal court, claiming exclusive trademark rights to the name, if not in the entire United States at least in the mid-Atlantic region.  Our intrepid blogger recently came upon the seminal legal development while perusing the Metro section in the Washington Post.  Legal filings in the case can be found through the Federal court system’s PACER service, here.

Pennsylvania’s trademark claim rests on its pre-dating the Maryland spookfest, and claims of consumer confusion as to source – the “likelihood of confusion” test for trademark infringement.  Indeed, Pennsylvania horror proprietor Jim Schopf told the Post of numerous instances of tickets purchased through his operation’s website by Halloween revelers thinking they had locked in dates at the Maryland “Field”.

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