Newt Gingrich

As if his sliding poll numbers were not enough to get him down, Newt Gingrich has now been sued for copyright infringement for using the song “Eye of the Tiger” on the campaign trail without authorization from the song’s owner.

Frank M. Sullivan III, composer of the song and co-founder of Survivor, filed the lawsuit in a U.S. District Court in Chicago alleging the Republican presidential candidate has been using the song without permission.  The song, created and performed by the group Survivor, became an international success after its release in 1982 and was also the theme song to “Rocky III.” According to the suit, Gingrich has been using “Eye of the Tiger” since 2009 during conferences and public events.

U.S. Copyright Act grants certain rights exclusively to the owner which are different from the rights given to a person who merely owns a copy of the work.  The owner of a copy of a work may resell or even destroy the copy they own.  They may not, however, reproduce, create derivatives, distribute, publicly display, or publicly perform the work because these rights belong to the owner of the copyright and no one else (unless by permission of the owner).

Newt likely ran afoul of the exclusive rights to publicly perform and display the work since he, according to the lawsuit, did not have the permission of Mr. Sullivan or the band, to use the song during his public appearances.

Mr. Sullivan claims that Newt should have known better since he himself is the author or co-author of forty copyrighted works and since the Copyright Act was extensively amended while he served as a Congressman.  Gingrich is also the CEO of Gingrich Productions Inc., a multimedia production company that features the works of Newt and his wife, Callista.  The Complaint even turned Gingrich’s own words against him, quoting a stump speech where the politician stated “[i]f a company finds that it has genuinely been infringed upon, it has the right to sue.”  Indeed they do, Congressman.  The suit seeks damages, any profits gained from using the song, attorney fees, court costs, and an injunction barring Newt
from using the song in the future.

Gingrich is by no means the first politician to draw the ire of a musician for using a song on the campaign trail.  U.S. Rep. Joe Walsh (R-Ill.) was sued by the other Joe Walsh – the guitarist from the Eagles, for reworking his hit with the James Gang “Walk Away” into a campaign song called “Lead the Way.”

John McCain’s campaign angered ’70s rock group Heart for using the song “Barracuda” at vice presidential candidate Sarah Palin’s rallies.  McCain and the Republican Party miffed several other bands including The Foo Fighters, John Mellencamp, and Jackson Browne, by using various copyrighted works on the campaign trail.  Browne sued over the use of his song “Running on Empty.”  Even as far back as 1984 Bruce Springsteen complained of Ronald Reagan’s use of his song “Born in the USA” during Reagan’s reelection campaign.

If the “Eye of the Tiger” lyrics are any indication of Sullivan’s approach to this case, Gingrich should settle quickly:  “And the last known survivor / Stalks his prey in the night / And he’s watching us all with the / Eye of the tiger.”

Nicholas D. Myers, Esq.

Ron Artest During the Lakers Championship Parade

Ron Artest has repeatedly stated that he is new man.  He has put behind him the emotional outbursts, suspensions, and the infamous brawl with Detroit Pistons fans that have defined his career perhaps more so than his basketball skills.  With this newfound perspective on life, he has also decided to give himself a new name.

On September 16, 2011, a Judge granted Artest’s petition for a legal name change after Artest cleared up some outstanding traffic tickets.  Meta is now his first name and World Peace is his last name.  Meta said the name change is “meant to inspire and bring youth together all around the world.”

Coincidentally, his new first name just happens to rhyme with that of his Dancing with the Stars partner Peta Murgatroyd.  Mr. World Peace will be testing out the new name while simultaneously trying to learn the Foxtrot, Samba, and other dances on DWTS.

Millions of Americans wonder how Meta’s basketball skills will translate on the dance floor.  Far fewer are wondering what happens to his old name now that he has legally given it up.

California, like many other states, has statutes in place to protect a person’s right of publicity, giving him or her the right to control the commercial value and exploitation of his or her name, picture, and likeness and to prevent others from unfairly appropriating the value for their commercial benefit.  But what if someone legally changes their name?  Do they still have publicity rights in their old name?  They essentially have abandoned it, so can others use it for commercial benefit?

Meta World Peace is not the only current athlete that has to be concerned about right of publicity issues in his old name [I am looking at you Chad Ochocinco (born Chad Johnson)].  They are also, by no means, the first athletes to adopt names other than their birth names [Kareem Abdul-Jabbar (born Lew Alcindor) and Muhammad Ali (born Cassius Clay, Jr.)].

Do these athletes have rights in the names they gave up?  There is no Federal right of publicity law, so whether a person retains rights in a name they have abandoned will come down to application of the applicable state law.  States’ right of publicity laws vary in breadth, so the answer is a bit unclear.  Laws within a single state can even vary in result.

Take, for example, a case involving Vanna White, in which she sued Samsung for an advertisement that was set in the twenty-first century and conveyed the idea that Samsung products would last until then. The commercial depicted a robot, dressed in a wig, gown, and jewelry which was selected to resemble Vanna White’s hair and dress. The robot was posed next to a game board recognizable as the Wheel of Fortune game show set.  White had not consented to and was not paid for the ad.

Ron Artest During a Lakers Game

The court in that case found that the commercial did not rise to the level of a “likeness” as contemplated by the California publicity statute.  However, the court did find that White’s common law right of publicity claim could survive even though the statutory claim had been dismissed since.  Unlike the statutory right which is limited to the appropriation of name or likeness, the common law right of publicity is based on the “use of any indicia by which the plaintiff is identifiable.”

In this lawyer’s opinion, the common law right of publicity in California acknowledges and preserves the fundamental notions on which right of publicity laws were originally based—that when a person creates value in her name and likeness, he/she alone should be able to capture that value.  No one should be allowed to sell a product by invoking the likeness of another person without obtaining consent.

Some legal professionals argue that a theory of abandonment should apply to right of publicity (like it does to trademarks as well as personal property) when a person surrenders a name (as in the above cases, actually making a legal name change).   However, this ignores the underpinnings of the laws and the fact that the person who chose to change their name is still the same person that created value in both their former and current name.

“Cap” (a/k/a Kareem Abdul-Jabbar) (f/k/a Lew Alcindor) got an Illinois court to agree, but only after appeal.  Abdul-Jabbar sued GMC over an advertisement, done without his consent, in which it referenced him being named MVP of the NCAA men’s basketball tournament three times and likened that to the awards its Buick car had received.  The district court in his case found that Abdul-Jabbar had abandoned the name Lew Alcindor when he legally changed his name.  However, Abdul-Jabbar successfully argued to the appeals court that abandonment is not a defense to a violation of the right of publicity because the right of publicity protects not only a celebrity’s “sole right to exploit his identity, but also his “decision not to use his name or identity for commercial purposes.”  The appeals court ruled that it is not possible for a person to lose rights in their own name or likeness through non-use.

I agree with the Illinois appeals court’s ruling and think that it recognizes the essence of the right of publicity, that is the sole right to exploit (or to choose not to exploit) a name in which a person has created value.

So, Meta World Peace should embrace his new name and outlook on life with some assurance that others will not be able to use “Ron Artest” to promote their products without first getting his permission (sorry to those looking forward to Ron Artest riot gear).  Besides, it just seems like bad karma to tread upon the rights of someone whose name is now World Peace.

Nicholas D. Myers, Esq.

Justin Bieber

Wildly successful teen pop star, Justin Bieber, recently had every single one of his videos pulled from YouTube and, no, it was not due to jealousy over his famous shaggy little hairdo.  Rather, a YouTube user going by the screen name “iLCreations” successfully removed all the videos by alleging copyright infringement.

There is no indication that iLCreations had any rights to the videos or a valid claim under copyright law.  Nonetheless, iLCreations invoked YouTube’s content removal policy by falsely claiming to own Bieber’s music videos.

YouTube and similar companies all have content removal policies to insulate themselves from liability for infringement when a user uploads infringing content to the site.  The removal policies are a product of the Digital Millennium Copyright Act (“DMCA”) which, among other things, shields Internet service providers from copyright infringement liability for simply transmitting information over the Internet.

Per the DMCA, if unauthorized copyrighted material is made available on a network, the copyright holder may issue a takedown notice to the service provider.  The service provider must then promptly remove or block the infringing material and inform the person responsible.  As long as the service provider removes the content, the provider does not incur liability.   However, if the provider does not respond to a claim of infringement, then liability may follow.

The net result is that Internet service providers remove content immediately upon receiving a notice and then inform the alleged infringer that the content has been removed due to an allegation of infringement.  These policies protect copyright owners because providers will remove infringing content quickly minus the hurdle of a drawn out legal proceeding.

Many companies use DMCA takedown notices to protect their rights in movies, television shows, songs, and music videos.  It allows copyright owners to prevent the unauthorized release of content over the Internet, which would otherwise hinder their ability to make a profit on the work they created.

Movies are especially vulnerable to illegal releases (especially when they are leaked prior to their release date) because most consumers view a film only once.  So, as soon as a movie is leaked, the copyright owner loses profits he otherwise would have received from movie theater ticket sales or DVD purchases.  High profile examples of leaked movies include Star Wars: Revenge of the Sith, Iron Man, Sex and the City, Hulk, and The Simpsons Movie.

In this lawyer’s opinion, the DMCA takedown notice is a good thing.  It provides an effective means to have infringing content removed quickly and to minimize harm to copyright owners.  Although this results in a “remove first, ask questions later” approach by service providers, the protections that the takedown notice provides outweigh the inconvenience of temporary removal of authorized content.  As far as Bieber is concerned, iLCreations misused the DMCA provisions by claiming rights he or she did not have in order to take down all of the Bieb’s music videos.  However, those consumed with Bieber Fever need not worry.  At last check, his videos are all back up, including my personal favorite “Baby.” 

Batman XXX - A Porn Parody

As a user of the Internet, you’re used to typing the name of a website into your browser with a .com or a .net at the end.  Maybe even .info, .biz, .org, .gov, or .edu.  These are all “top level” Internet domains.  The ones just mentioned are just a few of the twenty-two top level domains that exist.  Come December, however, these domains will be joined by sexy newcomer, .xxx.

Yes.  Very soon, people will be allowed to register what are being referred to as “porn domains.”  While some applaud the triple X domain as a means to readily identify websites that contain mature content, some brand owners (even pornography brand owners) have concerns.

An entity called The Internet Corporation for Assigned Names and Numbers (or, “ICANN”), regulates and approves top level domains.  ICANN decided to approve .xxx as a top level domain but also decided to give brand owners the option to pre-register .xxx domain names for their brands, compelling some companies to register such sites for the sake of protecting their reputations.

Not the Cosbys XXX

Brand owners already purchase other domains to prevent use by others, but many feel that the .xxx domain carries with it a stigma that could extraordinarily damage their brands.  These brand owners feel like they’re essentially forced to buy the .xxx domain (at roughly $200 a pop) or risk someone else acquiring the .xxx and ruining the image the company has cultivated.

For example, the Disney Company clearly would not want www.disney.xxx to exist.  Should the site fall into the wrong hands, Mickey and friends could be cast in a completely different light which could destroy Disney’s family friendly image and likewise result in a worldwide backlash.  Thus, Disney might pre-register www.disney.xxx to prevent others from doing so and wreaking havoc on Disney’s reputation.

Similarly, companies like MTV Networks (the distributors of popular children’s cartoon character, SpongeBob) share this concern and have pre-registered .xxx domain names as a means to protect their brands.

If a brand owner decides not to register .xxx domains that contain their trademarks, they do have the option of using ICANN’s dispute resolution policy to take back the domain from someone improperly using the trademark (although that will cost far more than the $200.00 domain registration fee).

But, is it fair to let brand owners pre-register all of the .xxx domains that they want prior to letting the general public apply for them?  Copyright law has a built in “fair use” defense for parodies, satires, and criticism (think Saturday Night Live).  Similarly, many courts have applied the traditional “likelihood of confusion test” to parodies in the context of trademark infringement.  Although “parody” is not a defense to a claim of trademark infringement, courts have noted in applying the likelihood of confusion test (either as a separate factor or in relation to other factors) that a successful parody will rarely be considered infringing because the ultimate object of a parody is to amuse, not confuse.  Thus, creators of parodies have the right to use copyrighted and trademarked work.

Brand owners, however, have long been leary of parodies and the potential harm to their brands that could result.  This is especially true in the case of “pornographic parodies.”  Never heard of them?  Well, (according to a simple Internet search) there are hundreds upon hundreds, including porno parodies of hit sit-com “The Office,” bizarrely entertaining, idiotic reality show, “Jersey Shore,” and cult movie classic, “The Big Lebowski,” to name a few.

Not the Bradys XXX

The creators of these porn parodies have the lawful right to create, distribute, and sell the films, and to incorporate the name of the work being parodied.  This means that they also have copyright and trademark rights (to varying degrees) in their parodies, and essentially, they are brand owners who should be entitled to pre-register for domains as well.

In this lawyer’s opinion, it makes sense to let owners of pornographic parodies register for the .xxx domain of their parody.  On the one hand, owners of copyrighted works or trademarks that are the subject of parody want the parodies to be clearly designated as such.  On the other hand, owners of parodies would like to be able to exercise their copyright and trademark rights.  Allowing the owners of porno parodies to register for the .xxx domain means that Internet users looking for the DC Comics series, “Batman,” will know to go to www.batman.com, while those (not this lawyer) seeking the porno parody of Batman will know to go to www.batman.xxx.  The .xxx domain then serves as an indicator of source and content that helps to avoid confusion, which is what brand owners want.

Nicholas D. Myers, Esq.

Pacquiao v. Clottey Weigh In

As any true Manny Pacquiao fan knows, Manny filed a defamation lawsuit against Floyd Mayweather, Jr., and Floyd’s uncle, Roger, for alleging that Manny used performance enhancing drugs.  Manny denied these claims and sued the Mayweather camp for harm caused by the allegations.

The U.S. Supreme Court has long since declared that “the interest of a Plaintiff in a defamation suit is his reputation.”  The court recognizes that reputations have value, and, thus, any person can seek relief and damages when his or her reputation has been harmed.

Floyd Mayweather, Jr.

Through his attorneys, Manny requested that Floyd show up for a deposition (a meeting where attorneys can ask parties and witnesses questions under oath so they can use the responses in court in place of spoken testimony).  Manny’s attorneys sought to question Floyd about his allegations and proposed at least twenty-four different dates for Floyd’s deposition.   Interestingly, Floyd claimed to be unavailable on all of the dates due to “training,” yet photos surfaced of him traveling for pleasure in various parts of the U.S. during that time.

Floyd is scheduled to fight Victor Ortiz on September 17, 2011, at the MGM Grand in Las Vegas.  Manny will fight Juan Manuel Marquez on November 12, 2011, in the same venue.

Due to Floyd’s unwillingness to show up for a deposition, Manny’s attorneys asked the Court to issue a default judgment on the defamation claims.  (A default judgment amounts to the legal equivalent of a TKO).  Manny’s attorneys seek more than $10 million in damages, plus attorneys fees.

If Floyd continues to refuse to be deposed, the defamation case is a done deal in favor of Manny.  AND, since the public at large sees Manny as the favorite and Floyd as cowering away, Manny ALSO wins in the public eye as long as Floyd refuses to fight.  In this lawyer’s opinion, Floyd needs to touch gloves and come out fighting, although I don’t expect it to end well for him.  Floyd very well may share this sentiment which could explain why he still won’t face Pac-Man in the ring.

Nicholas D. Myers, Esq.

Pusser’s Rum, purveyor of a moderately-priced rum under the same name, has successfully forced the name change of Painkiller, a Lower East Side bar in New York.  How?  It turns out that Pusser’s secured two trademarks in the name PAINKILLER, one for “alcoholic fruit drinks with fruit juices and cream of coconut and coconut juice,” and one for “non-alcoholic mixed fruit juices.”

So, when the Painkiller bar started operating under the name and, even worse in the eyes of Pusser’s, started offering a drink by the same name without using Pusser’s Rum, Pusser’s sued.  In a consent order submitted to the Court, the bar agreed to surrender its website and change its name to PKNY.  Not a far leap: P(ain) K(illers) N(ew) Y(ork); but far enough removed to avoid further infringement.

There are interesting twists to this story, though.  First, it turns out that Pusser’s did not invent the Painkiller cocktail.  The drink is thought to have been invented at the Soggy Dollar Bar in the British Virgin Islands in 1971, a decade before Pusser’s was founded and more than thirty years before Pusser’s filed their trademark applications.

How Pusser’s was able to secure the trademark for a cocktail they did not invent requires an understanding of trademark law.  A person or entity is only entitled to trademark protection so long as they continue to use the mark.  Furthermore, trademark rights are unique to every country.  Thus, if the creator of a trademark ceases to use the name, or is not using it in a certain country, others are free to use the name.  This explains how Pusser’s was able to secure trademarks in the United States even though the British Virgin Island-based Soggy Dollar Bar created the drink and name for it.

The second interesting twist is that the notoriety gained by the lawsuit led health inspectors to investigate PKNY (f.k.a Painkiller).  The inspection turned up multiple violations, the most alarming of which was the presence of live roaches.

Pusser’s Rum is facing its own problems as well.  Their lawsuit over a cocktail they did not invent has caused an uproar in cocktail circles, leading to boycotts and ridicule beyond what it had previously endured for having the name Pusser’s.

Nicholas D. Myers, Esq.

Come and listen to a story about Miss Elly May

A television icon even to this day

She made the role famous all on her own,

When Mattel stole it, without throwing her a bone.

Misappropriation that is, false endorsement, right of publicity.

Well y’all ought to know ol Mattel’s a millionaire,

Kinfolk said, “Elly you gotta shoot that bear”

Said an IP lawyer is just what you need

To sue Mattel for that darn evil deed.

Lawsuit that is, injunction, damages, and attorney’s fees.

Well now its time to say hello to the judge and his court.

And Elly May will kindly ask ‘em for their support.

In stoppin’ Mattel from a cheatin’ and a stealin’

Her pretty face, with no right or good reason.  

Trial that is.  Things just started, we’ll keep you posted.

Y’all stay tuned now, y’hear?

For nine seasons actress Donna Douglas played Elly May Clampett on the popular television show ‘Beverly Hillbillies.’  Mattel, maker of the popular Barbie Dolls, sought to capitalize on the fame and recognition ofDouglas’ character by offering a doll designed to look like Elly May.  One problem—according to Douglas, Mattel never sought or obtained her permission to use her name and likeness on the dolls.

Hence, Douglas, now 77, has filed a Complaint in her home state ofLouisiana, alleging damages and seeking an injunction as a result of Mattel’s misappropriation of her name and likeness.  Louisiana, like many other states, has statutes in place to protect a person’s right of publicity, giving them the right to control the commercial value and exploitation of his/her name, picture, and likeness and to prevent others from unfairly appropriating the value for their commercial benefit.

Mattel denies liability, claiming that they obtained the rights to Beverly Hillbillies for the Elly May product through the appropriate channels.

The case was filed on May 5, 2011, and we will provide updates as we receive them.  Y’all stay tuned now, y’hear?

Nicholas D. Myers, Esq.

Artist David LaChappelle has filed suit against musician Rihanna, her record label, the producer, and the director of Rihanna’s music video for her newest single, “S&M.”

The lawsuit, filed February 14, 2011, is merely the latest layer of controversy for the video that has been age-restricted on YouTube and banned in 11 countries in just two weeks since its release.  The heavily sexualized video includes sadomasochistic imagery that some viewers have found indecent.  LaChappelle’s objection, however, is not based upon decency.  Rather, he alleges that the video “copies original photographs conceived and created by [LaChappelle].”

LaChappelle, a renowned artist, contends that Rihanna never sought permission to use his photographs despite Rihanna and her people having asked the director of the video (and another director who turned down the job) to “make a ‘LaChapelle-esque music video.’”  LaChappelle further alleges that his actual photographs were used in the storyboards for the video.

LaChappelle claims that that the “S&M” video incorporates images so similar to his photographs that it violates Federal copyright and trade dress law.  But the video did not use LaChappelle’s exact photographs, so does it constitute copyright or trade dress infringement?

The owner of a copyright has the exclusive right to do and to authorize (among others) any of the following: (1) reproduce the copyrighted work;  (2) prepare derivative works based upon the copyrighted work;  (3) to distribute copies of the copyrighted work to the public; and (4) to display the copyrighted work publicly.

The copyright infringement claim is likely to turn on whether Rihanna’s video is similar enough to constitute a “derivative work.”  Under Federal law, a “derivative work” is a work based upon one or more pre-existing works, such as a translation, musical arrangement, dramatization, fictionalization, motion picture version, sound recording, art reproduction, abridgment, condensation, or any other form in which a work may be recast, transformed, or adapted.  If the video is deemed to be a “derivative work” then LaChapelle has the rights to it and Rihanna is likely to be found to have committed copyright infringement.

The trade dress claim contends that LaChappelle’s work is so well known that it has acquired secondary meaning, i.e., that people attribute the work to LaChappelle and that the video’s images cause confusion as to the source of the work (LaChappelle rather than Rihanna).

LaChappelle hopes to use legal restraints to stop Rihanna and her video.  The merits of the case may get an early test if LaChappelle seeks a preliminary injunction, the legal equivalent of a ball gag.

Nicholas D. Myers, Esq.

Unless you’ve been living under a rock, you have probably heard some mention of Charlie Sheen, his party habits, his trip to rehab, the cancellation of the rest of the season of his show Two and a Half Men, his denouncement of addiction, and the all out assault he has launched against CBS, Producer Chuck Lorre, and anyone else standing in the way of Charlie Sheen “winning.”

Some say Sheen is not worth the bloated salary he receives ($1.8 MM per episode) since he merely plays himself—a middle aged playboy with a penchant for woman and booze.  I say he deserves every dime of his salary and potentially more from the network for which he has raked in over a billion dollars.  In fact, don’t be surprised if CBS eventually gives Sheen the $3 MM per episode he has demanded.  They, more than anyone else, have done the math and realize that Sheen’s success rate with Two and a Half Men is 100%, and that the show will die without him.

Perhaps CBS should pay the man what he wants so that he can afford his goddesses and mercury surf board.  Sheen can spend his life “in character” and CBS can keep cashing the advertising checks he brings in.  CBS, Lorre, Sheen, and the rest of the cast and crew deserve to make a pretty penny of the hit they have created—even if it happens to be because the edited and scripted version of Sheen’s life sells itself.

Who does not deserve to get rich is every opportunist seeking to capitalize on the flash-in-the-pan moment of Sheen’s public outcries.  It took less than a week from Sheen’s first public appearance post-cancellation for persons and companies to start selling t-shirts and other memorabilia with Sheen’s quotes, his image, and his likeness.

Don’t get me wrong, we are all amused by Sheen’s over-the-top statements such as “I don’t sleep.  I wait.” and “Sorry my life is so much more bitchin’ than yours.”

But amusement should not mean profit for those not entitled to exploit a person’s name and likeness.  California, like many other states, has statutes in place to protect a person’s right of publicity.  Rooted in both privacy and property law, the right of publicity is ‘[t]he right of an individual, especially public figure or celebrity, to control the commercial value and exploitation of his name or picture or likeness or to prevent others from unfairly appropriating the value for their commercial benefit.”[1]  In essence, those who have become famous, not others, should be the one’s to capitalize on their fame.

Of course, exceptions exist for free press and free speech so that people can report and comment on the lives of notable personalities, such as Charlie Sheen.  That is why TMZ and Perez Hilton can run articles about our favorite warlock and make a pretty penny doing so.

Immunity does not exist, however, for people trying to hoc products by evoking or unabashedly using a person’s name, image, or likeness.  Yet people try.  The website www.skreened.com alone has over 150 different unauthorized t-shirts for sale that use quotes, silhouettes, and even pictures of Charlie Sheen.

Others have tried to capitalize on F18 Sheen above board by seeking an endorsement or license arrangement wherein they are granted permission to use his name, image, and likeness in exchange for compensation.  The Chill Group, for example, is offering Sheen a $3MM endorsement deal to promote their drink Just Chill, which is marketed as having stress-relieving qualities.  The catch?  In order to get the endorsement deal, Sheen has to complete a thirty day drug treatment plan and agree no to make any additional media appearances during the deal.

There is only one problem, Sheen is already cured of his drug addiction.  How?  Just ask Sheen: “I closed my eyes and made it so with the power of my mind.”

Maybe Sheen will start exploiting his right of publicity himself and begin offering the Charlie Sheen drug for sale, with the appropriate warning label of course: “ If you try it once, you will die. Your face will melt off and your children will weep over your exploded body.”

Nicholas D. Myers, Esq.

Most people are aware that names and symbols can be used as trademarks by companies to differentiate their products from others (such as Pepsi and Coke) and many people also know that there is some formal application process to obtain a Federal trademark registration.  However, most people do not know how the whole process works and, therefore, are surprised to find out that even after the United States Patent and Trademark Office (“USPTO”) has determined that it finds no bars to registration, that any third party that believes it may be harmed can oppose an application and seek to have registration denied.

Such instances are known as Opposition Proceedings. After the USPTO has reviewed an application, found it to be in order, and found no other applications or registrations that the USPTO deems confusingly similar; the USPTO will then publish the application for a thirty day period.  It is during this publication period that any third party that believes it will be harmed by the registration of the applied-for-mark can file a Notice of Opposition stating the reasons why it believes it would be harmed.

The filing of a Notice of Opposition is the beginning of an abbreviated and condensed litigation proceeding where the parties can conduct discovery, take depositions, offer testimony, and eventually submit arguments for and against registration, all done via paper submissions.

It is important to be aware of the potential for Opposition Proceedings because, while they are abbreviated in comparison to traditional litigation, these proceedings take approximately fifteen (15) months to conclude (assuming no delays) and can potentially cost in excess of a hundred thousand dollars ($100,000.00).

It is impossible to predict whether a third party will file a Notice of Opposition and anyone who tells you that they can is lying.  So, how does one plan for the possibility of an Opposition Proceeding?  One major step that can be taken is having a comprehensive search done prior to filing a trademark application.

Many firms, including mine, offer comprehensive searches where they contract with a third party to scour the country for any names or symbols that are similar to the name or symbol you want to register.  The searches are very thorough, searching not only the USPTO database but state trademark databases, phone books, the Internet, and other sources.  Your attorney will then review the third party marks and symbols and provide you an opinion letter as to the registerability of your mark or symbol.

The search and opinion letter provide you with a good idea of what other trademarks are out there and identifies the owners of such marks who may oppose your application.  Having this knowledge allows you to prepare for potential oppositions and even position yourself in the best possible manner to either avoid an opposition or increase your likelihood of success.  In some cases it may even make sense to seek consent from a third party prior to or during the application process.

The search and opinion letter and positioning yourself or your company at the outset can save you thousands, tens of thousands, or even hundreds of thousands of dollars in the long run.  Your trademark is the way in which consumers identify your goods and services and to have to change or abandon a trademark due to an opposition can harm the goodwill you have worked so hard to establish.  Thus, it is prudent for any applicant to at least discuss the option of a search and opinion letter with their counsel prior to filing a trademark application.

Nicholas D. Myers, Esq.