Archives For Trademark Disputes

At Mighty Marks®, we like to break down the complexities of trademark law to help you protect your brand. Luckily, sometimes pop culture helps us out and, as illustrated in HBO’s hit series Silicon Valley, trademark law can even provide entertainment.

Richard, the primary founder of the startup featured in the show, spends most of Episode 3 worried about his company’s name: Pied Piper, Inc.

After receiving a check for $200,000 from an investor, Richard learns of the many problems ahead. Specifically, he didn’t own the company name and an irrigation company had federal trademark protection for the name. These are two issues that could have been easily avoided with a little due diligence. Let’s walk through each.

Business Names

First, he should have checked with his state’s Secretary of State to see if the company name was available. Each state maintains records of businesses formed in the state and two entities cannot have the exact same business name on file in the same state. Note this is not a trademark matter, this is a business law matter. Had he searched his state’s records, he would have found Pied Piper, Inc., the irrigation company. He then could have changed the name (even if just slightly) so he could have formed a business entity.

However, poor Richard now has a $200K check payable to “Pied Piper, Inc.” that he can’t cash because he doesn’t have a business entity under that name!

USPTO Registrations

Second, he should have checked the USPTO databases. Just last week we explained how to perform a preliminary “knockout” search including how to search the USPTO database. Had he searched the database, he would have found the irrigation company. He then could have picked a different name or sought federal protection for the name since his use (computer code) is different from the real Pied Piper’s use (irrigation).

But again, poor Richard is in a bind because he is now spending time and money dealing with something he could have prevented with a simple USPTO search.

Remember, when starting a business, just a little due diligence can go a long way. If you enjoy these posts, be sure to subscribe to our monthly newsletter to get more updates in your inbox!

The Misfits (the 1970’s and 80’s heavy metal band) are back in the news; but not for their music.

In an interesting squabble and lawsuit, one former band member is claiming rights to a series of very lucrative licensing deals. Musicians everywhere and businesses of all kinds should pay attention to the lessons coming out of this case!

How We Got Here

Glenn Danzig was a founding member of the band in 1977 but eventually split ways from the group.

In 1994, however, Danzig and the new band leader, Jerry Only, settled their differences in a private agreement. Danzig told the media that he gave up rights to the band’s name and skull logo with respect to performances but that he maintained a one-half ownership interest in the name and logo with respect to merchandise. Only publicly acknowledged this agreement years later.

Danzig’s new lawsuit claims that Only secretly re-registered the band’s marks in 2000 and subsequently obtained very profitable merchandising deals without including Danzig. These deals lead to the current dispute and lawsuit.

The Takeaways

While it will take some time for this case to proceed to either a judicial resolution or a settlement among the parties, mark owners should take note of the issues at hand.

First, if the 1994 agreement is valid and states what the members have publicly stated, then Only might be in a tight spot because his re-registration of the marks would have required him to certify to the USPTO that he (or his band) had the exclusive right to use the marks in commerce. If the prior agreement didn’t grant him such exclusive rights, then Danzig can presumably seek to cancel the validity of the current registrations that excluded him. He can then likely seek his cut from the merchandising deals.

Second, businesses must remember that trademarks are related to specific goods or services. In this case, the trademarks for the performance of music were granted to the band. But the trademarks for selling shirts and hats remained split between the band and Danzig. Thus, a business that performs multiple functions (for instance, a restaurant that also sells shirts) would be well advised to obtain rights for all of their various goods and services.

And remember, when seeking rights, a good attorney can be very helpful. Feel free to contact us anytime with trademark questions.

Image Credit: Thinkstock/r_gianluca

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.

We’ve previously explained how trademark rights stem from actual use in commerce. Well, for one small Iowa based company, their early use of the word “Tweet” was enough to beat out tech giant Twitter! The history of this case is a great example of why it is important to seek federal protection as soon as possible.

First Use

Iowa based Twittad, LLC, began using the mark “Let Your Ad Meet Tweets” back in 2008. It quickly filed for federal protection and obtained a registration a year later without any objection from Twitter (or from any other company for that matter).

As a result, Twittad obtained exclusive rights to use that mark as well as any other mark that would be confusingly similar in connection to online advertising. Not surprisingly, Twitter, Inc. became upset about this when it learned about the registration!

The Lawsuit

Unfortunately for Twitter, in order for it to obtain rights to use the word “Tweet”, the corporation had to file a petition seeking to cancel Twittad’s trademark registration.

It filed suit and argued that the word “Tweet” was already a famous Twitter term prior to Twittad’s filing of its trademark application and, further, that Twittad’s registration and use of the word “Tweet” was an unfair attempt “to exploit the popularity and fame of Twitter’s TWEET brand.”

Twitter used this reasoning to claim that Twittad’s registration should be canceled and that Twitter should be deemed the owner of the “Tweet” mark.

First Use Principle

However, Twittad’s registration created a legal presumption that said Twittad was the rightful owner of the mark. As a practical matter, that meant Twitter was forced to either deal with Twittad and settle on terms that might be favorable to Twittad or spend a lot of money and time fighting Twittad in court. Not surprisingly, the parties settled.

The Settlement

Although the specific terms were not disclosed, it is clear that Twitter obtained the rights to the mark and Twittad was granted the right to keep using “Let Your Ad Meet Tweets.” The parties did not disclose whether Twitter paid Twittad, but based on the strength of Twittad’s case, it is likely that some chunk of cash changed hands.

In short, Twittad lost exclusive rights to the word, but it was allowed to keep using the mark and likely pocketed some nice spare change.

The Lesson

Twittad’s registration gave it the upper hand and is a great example of the power of a federal trademark registration. If you have a brand, you should check out to learn how you can protect your rights!

Image Credit: Thinkstock/Kristina Heiner

*This article is very general in nature and does not constitute legal advice. Readers with legal questions should consult with an attorney prior to making any legal decisions.