Copyright Office Modernizes Registration Under DMCA

Any company operating a website that is unsure whether all the content on it is its own copyrighted material should have an Agent registered under the Digital Millennium Copyright Act (“DMCA”). At long last, registering an Agent no longer involves a process out of the 1950s with a filing fee well out line with its benefit. Filing is now done online and the fee is minimal.

The DMCA provides safe harbors from copyright infringement liability for online service providers and websites that allow users to post or store material on their systems, or, perhaps, have material on their sites of questionable copyright origin. If a DMCA Agent is registered, then the agent must be the one to receive notifications of claimed copyright infringement. After notice, the website has a short time to determine if the objected to material is infringing another’s copyright, but no law suit can be brought during this time period, and if the material is removed, no suit can be brought at all.

In December 2016, the Office introduced an online registration system and electronically generated directory to replace the Office’s old paper-based system and directory. Accordingly, the Office no longer accepts paper designations.

Until  December 31, 2017, Agents who were appointed under the old paper-based system are still valid agents. For the time being, the Copyright Office is maintaining two lists of Agents, but after that date, all Agents need to be appointed electronically. Knull PC is contacting clients for whom it has been Agent under the paper system to ask if they want this update.

Understanding the Scope of Your Trademark

By Chuck Knull

Many laymen, and too many lawyers, confuse trademark rights with copyright (and patent rights).

Trademark law, which at its roots is a law intended to protect consumers from making purchases of products which are not what they intended to buy, provides a right for a trademark’s user to keep others away from its mark for similar goods or services. But in no sense is a trademark’s user the “owner” of the term, slogan, or logo which embodies the trademark. On the other hand, a copyright or patent give its owner a bundle of rights that only the owner can exercise.

From time to time, law suits are brought for trademark infringement that are a source of puzzlement and curiosity to trademark lawyers.   There are two recent examples of such relating Upstate New York businesses.

One of the law suits was brought by Dov Seidman, an author and lecturer on the subject of corporate responsibility and the owner of various trademark registrations for the term HOW, against Chobani LLC, the upstate maker of Greek yogurt products. Chobani recently began to use the term “How Matters” in its advertising, relating that term to how it makes its products in an environmental, “corporately responsible” manner. Mr. Seidman objected and then filed suit in Manhattan federal court.

The other law suit involves a loss by a Cooperstown company called Legends Are Forever, owner of a trademark registration for LEGENDS ARE FOREVER that includes clothing, against the shoe and apparel maker Nike.

Whether or not trademark infringement is to be found is based on whether or not there is “likelihood of confusion” by consumers between the trademark used by one side and the trademark used by the other. The cases generally are brought in federal court and determination of likelihood of confusion is based on the evidence presented. The courts have sets of “likelihood of confusion” factors that must be considered. In New York, these are called the Polaroid factors after the 1961 case of Polaroid Corp. v. Polarad Elecs. Corp.

The factors are:

(1) the strength of the mark,

(2) the similarity of the two marks,

(3) the proximity of the products,

(4) actual confusion,

(5) the likelihood of plaintiff’s bridging the gap,

(6) defendant’s good faith in adopting the mark,

(7) the quality of defendant’s products, and

(8) the sophistication of the consumers.

As you can imagine, each one of these factors have a body of case law and analysis helping to define what makes a strong mark, levels of similarity, proximity in terms of marketing and distribution channels, and all of the other factors.

In the LEGENDS ARE FOREVER case, the Court threw the case out because the plaintiff failed to prove one of the basic necessities–USE.

While the plaintiff had the trademark for clothing, it could only show in evidence that Nike had made up a few sample shirts with the trademark on them along with samples with other slogans. These shirts were not sold by Nike. Hence, there could be no confusion where there were not products for consumers to confuse. As an aside, had Nike actually marketed the shirts, some of the other factors, including the fact that the trademark is a slogan (weak) and the presence of other words on the samples that were found could still have resulted in a finding of no likelihood of confusion.

In the HOW case, which is in its early stages, Seidman’s trademark registrations relate to his use of HOW in marketing books and services to executives managing big companies. Chobani’s use of “How Matters” is directed at marketing yogurt to yogurt consumers. Thus, while it remains to be seen what evidence each side might offer, the possibility that an executive (even a person who buys yogurt) is going to purchase yogurt when intending to purchase Mr. Seidman’s books or services seems quite far-fetched. The fact that “How” is a common word, moreover, means that it probably can only be proved to be a weak trademark and is unlikely to get very broad protection. We shall see.

But both of these cases seem to stem from a misunderstanding or at least excessive enthusiasm about the scope of trademark protection. It is not about “owning” a word or phrase. It is only about preventing consumer confusion (and sometimes other abuses of the trademark owner’s goodwill).

Protecting Beer Brands: A Trademark Strategy for Brewers

By Chuck Knull

I have spent a great deal of time as a lawyer helping brewers keep their brands from encroachers.  There are numerous ways that the brand names and trade dress of one beer can cross over into the territory of another beer brand.  As a result, a bartender in a dimly lit bar may pick the wrong bottle out of the cooler for a patron, or a soused patron might slur out an order one brand when intending another. Things like this have plagued the larger brewers for ages. Hence, specially colored and shaped bottles, and distinctive cans are often used by them.

Add to this the confusion of restaurants and pubs, which may have names close to the names of beers,  serving their own mini-brews and the problem gets bigger.  Now, with a multitude of local breweries growing and expanding in the U.S., the possibility is growing of one brewery’s “Red Ale” looking and sounding a lot like the “Red Ale” from another brewery that used to have a territory far enough away to make no difference. As we have reviewed the nation we have noted that a lot of growing local breweries need to step up the level of protection for their brands.  Otherwise, they may face expensive and uncertain litigation in the future.

I have written about the problem of relying on the TTB Certificate of Label Approval. A COLA IS NOT BRAND PROTECTION. My discussion is intended to offer a roadmap to actual brand protection using the Federal Lanham Trademark Act and related legislation to obtain concrete protection. The primary methods of obtaining protection for your brands must, of course, depend on individual budgets, but a growing brewer must not stint on brand protection or it will very possibly run into boundaries that it will not be able to cross over.

The aim of any brewer of beer should be to make sure that when a customer orders its beer, it gets its beer. The aim of branding is to be sure that all potential customers know about one’s brands. The way one does both of these things is by adopting a brand strategy.  Below is an aggressive strategy such as the ones that I have helped large, multi-national brewers carry out. Select from this list in a generous way and implement each selection.

Trademark Registrations Are Territorial

Except for a very few, absolutely famous trademarks, a trademark registration will not provide trademark rights beyond the jurisdiction providing the registration.  There are great stories in trademark law about people visiting foreign countries, seeing a nice product with a nice mark connected to it, and taking the entire concept of the product and mark to another country and, more or less, cloning the product.  Later, the originator decides to move into the same country and finds that it has no rights to use its trademark there.  Trademark registrations are territorial.

I have had some interesting cases showing such twists and turns. I represented a Dutch milk (not beer) coop which had made a popular condensed milk product in Vietnam (used to make wonderful Vietnamese coffee). The mark had been expropriated by the Communist Vietnamese government.  But Vietnamese immigrants to the USA demanded the product and the former managers of the Vietnamese subsidiary who were among these immigrants developed the brand in the US under the authority of the Dutch Coop.

When Vietnam went capitalist, the milk company which had evolved out of the seizure from the Dutch tried to bring into the US a close version of the Dutch product already here.  It lost in court.

Another situation causing great agitation for AmBev, the owner of the Budweiser beer brand, involves prior use of Budweiser by European brewers blocking attempts by AmBev to obtain Common Market trademark registrations (and a reverse situation where the Czech owner of perhaps the oldest Budweiser trademark must change its brandname for its been when it sells into the United States).

Strategic Trademark Registration

  1. Obtain trademark registrations for each beer brand in BLOCK LETTERS in each country where the beer will be sold, because trademark rights are territorial.
  2. Obtain a trademark registration for one’s House Mark in BLOCK LETTERS in each country where the beer will be sold, because trademark rights are territorial.  I have previously written about House Marks.
  3. Obtain trademark registrations for each beer and can label (including all colors and graphics) in each country where the beer will be sold, because trademark rights are territorial.  An advanced trademark program is going to be concerned with look alike labels.  It is too easy for a bartender or consumer to pick up the wrong bottle, can or six pack if the labels are too similar.  A few mistakes and the brewer that has simulated the popular label will find its sales increasing.
  4. Obtain whatever protection is available for any special bottle or can colors and shapes. In the U.S., such protection is generally available through trademarks. In other countries, special design protection is available.
  5. Obtain trademark registrations for slogans used in advertising your beers.A good slogan can enhance even a one trademark brewery’s house brand mark. Some old standards are listed below:- The Beer that Made Milwaukee Famous (Schlitz)
    – The Champagne of Bottled Beer (Miller)
    – It’s All About the Beer (Heineken)Check out more great beer slogans here.
  6. Make appropriate trademark applications for goods distributed to bars and restaurants, such as signage, glassware, coasters, and for any items that are sold or licensed for sale, such as T-shirts with beer labels on them.

Many of the worst experiences that brewers face are caused by t-shirt companies printing what they consider to be parody t-shirts featuring pictures of beer cans or bottles along with statements like “I only drink

[name of beer] when I want to get blasted.”  Alcohol is a highly regulated business and the government frowns upon statements about beverages that imply potency, drunkeness, and the like.

A brewer should want nothing to do with such “parody” and the first step is to apply for trademark applications for the types of goods that might be bothersome.

Copyright Registrations Support Your Trademarks

  1. Depending upon how original and artistic one’s labels are, it may be possible to apply for and register copyright in the labels. Timely registrations can provide clout against competitors who copy too closely other’s labels.  Learn more about why applying for copyright registration is a good idea here.
  2. Company websites and advertising materials should be subject to periodic copyright applications and registration.

Police Trademarks to Stop Problems Early

  1. Review and dispute domain names containing house mark or brand marks or similar
  2. Have your trademark lawyers proactively watch your marks or employ a trademark watch service for USPTO applications for alcoholic and non-alcoholic beverages, restaurants and bars, and foods such as cheese and snacks; oppose similar names.
  3. Monitor Twitter, Facebook, etc. for derogatory comments about brands and take action by complaining to these services and/or referring to your lawyers.
  4. Check for new COLA filings for alcoholic beverages to assure that no similar names to your brands are applied for in COLA filings.  Small breweries, distilleries and wineries may never do anything beyond a COLA filing. Timely cease and desist letters can stop the use of similar names.  We have discussed why reliance upon a COLA alone is not a brand protection program.
  5. An owner of a registered trademark can file with U.S. Customs to prevent counterfeit or unauthorized imports of trademarked goods. Entry of such goods, when they are alcoholic beverages, is less of a problem than with some other goods.
  6. Review competitor advertising for misrepresentations of your brands or false or misleading claims as to their own brands. Take action if necessary.

A COLA is Not a Trademark

By Chuck Knull

Before a brewer, winemaker or a distiller can put its product into kegs, cask, bottles, cans or boxes, the labels that it will stick on the packaging (including labels on imported product)  must be approved by the Alcohol and Tobacco Tax and Trade Bureau (TTB). The approval is called a Certificate of Label Approval (COLA).   Many brewers, winemakers, distillers, and importers mistakenly believe that the COLA has the same or similar importance to a U.S. trademark registration in terms of securing brand protection and/or clearing them from infringing other people’s trademark rights.  They couldn’t be more wrong.

When the TTB looks at COLA applications, one of the things it reviews is the brand name, i.e., the trademark.  If there is an exact match for the brand name for already approved product by another then the COLA may be denied. That is, if the TTB, which examines about 100,000 COLA applications a year, does not miss the duplication. Or not see the duplication as a problem because for it, the products are not the same.  A number of years ago, the owner of the mark BLACK & WHITE for whiskey had to sue a brewer who had come out with BLACK & WHITE for beer,  And Remy Martin, with its REMY mark for Cognac, had a trademark battle with a wine called F. REMY.  The fact that all the products had approved COLAs did not help the two brands which were the latecomers.

If there is no match for the brand name, and the COLA is approved, the brewer, winemaker or distiller should not even think for a moment that it has a clear brand name/trademark for its product. A COLA approval is not a trademark clearance.  The fact that a COLA application is made and approved is, of course, great evidence that the applicant has a bona fide intention to use the trademark, but that will not be enough to carry the day if there is use or even a prior, bona fide intention to use, the same of similar mark.

This is because trademark law does not work only on exact matches of terms in a given mark.  Trademark infringement happens when there is likelihood of confusion.  Under the criteria for finding likelihood of confusion, trademarks for soft drinks, restaurants, and cheese, to name a few, have caused problems for marks for alcoholic beverages. I have had the experience of representing the makers of MURPHY’S IRISH STOUT, which of course, had a number of approved COLAs for its brands and container labeling and had been brewing since 1856, when a restaurant named Murphy’s tried to cancel its US trademark registrations. There are legions of other such cases. The owner of the BOAR’S HEAD trademark for meats had to sue a brewer who came out with BOAR’S HEAD beer,.  The owner of BLACK LABEL for beer had to litigation against a cigarette maker that came out with BLACK LABEL cigarettes.

The only way to assure trademark clearance is to obtain a full clearance trademark search which, after analysis, shows no blocking trademarks in use.