Monthly Archives: July, 2014

Should I Seek A Trademark Registration For My Design Trademark In Black & White Or Color?

Clients who have developed trademarks comprised of words in a particular design often ask us if they should seek registration of the design in black & white or in color. The answer is that it depends on whether color is a critical feature of the design mark. If the color used in the design in and of itself can serve as an indicator of the source of the goods or services to be marketed and sold under the design mark, then registration should be sought for the colors featured in the design. (Think brown and the UPS logo, pink and the T-Mobile logo, red and the Target logo, etc.) In fact, one seeking a federal trademark registration must specify whether color is a feature of the mark sought to be registered.

The problem with seeking registration of a particular color is that the protection that results from the registration could be limited to the colors used in the design. This is not automatically the case, and the analysis depends in large part on how distinctive the underlying design may be – the more distinctive the design, the less important a particular color may be.

Because claiming color as a feature of a mark sought to be registered may act to limit the protection that results from the registration, we generally advise against claiming color as a protected element unless the color acts as a source indicator. If the trademark owner can afford to file 3 separate applications for its design mark, we recommend seeking registration: (i) for the word aspect of the mark standing alone; (ii) design mark in black & white or grayscale; and (iii) the design mark in color. In determining which of these three approaches should be employed, it is critical to consider what registration(s) the specimens of use will support.

Before a trademark owner proceeds to seek registration of a design mark, it is imperative that the owner seek the advice of trademark counsel to determine the best strategy for registration because registration of a design mark can present a number of thorny issues.


Seventh Circuit Rejects “Character Completion Theory” And Confirms Sherlock Holmes Is In Public Domain

In a case of potentially great significance to copyright law and the entertainment industry, the Seventh Circuit has issued its long-awaited decision (authored by Justice Richard Posner) in Klinger v. Conan Doyle Estate, Ltd. The decision can be found here:

The issue in Klinger was whether the characters of Sherlock Holmes and Dr. Watson continue to be protected by copyright even though 50 of the 60 works by Sir Arthur Conan Doyle that feature the characters are now too old to qualify for copyright protection in the United States. The case began when the Conan Doyle Estate threatened to prevent the distribution of a proposed anthology of new Holmes stories by contemporary writers unless it received a license fee for the proposed uses of elements from the writings of Sir Arthur Conan Doyle.

The plaintiff asked the court to find that the 50 Holmes novels and stories published in the United States before 1923 (the current copyright cut-off date in the United States) now are in the public domain and no longer protected by copyright so that anyone could use any elements of those old stories, including the characters of Holmes and Watson, for any purpose in any new artistic works without having to ask anyone’s permission or pay a license fee to anyone.

The Conan Doyle Estate defended by raising a copyright theory known as the “character completion theory,” which says that characters who are developed over a series of stories, some of which still are protected by copyright, may remain protected by copyright even though some of the stories in the series may have passed into the public domain.

In the Klinger case, the Conan Doyle Estate relied on the fact that 10 Holmes stories published by Sir Arthur Conan Doyle still were protected by copyright, and argued that the Holmes and Watson were “unified works of art” because Conan Doyle used the last 10 stories (published as “The Casebook of Sherlock Holmes”) to further the development of the Holmes and Watson characters and such characters were based in part on the creative development in the final 10 stories. In fact, Conan Doyle did discuss events from the youth of Holmes and Watson in the 10 stories still protected by copyright so the Estate’s argument had some basis in the stories themselves.

Unfortunately for the Estate, the Seventh Circuit rejected its “character completion theory” argument. Emphasizing that the Estate’s argument would mean that the Holmes and Watson characters would receive an unprecedented 135 years of copyright protection, the Seventh Circuit held that “from the outset of the series . . . Holmes and Watson were distinctive characters and therefore copyrightable,” and the “additional features” which Conan Doyle added to their portrayals in later works only resulted in
“somewhat altered characters” which “were derivative works, the additional features of which that were added in the 10 late stories being protected by the copyrights on those stories.”

Going forward, it will be interesting to see how the opinion in Klinger is applied when characters such as those in series such as Star Wars, Star Trek, Harry Potter, The Hunger Games, Twilight, etc. first enter into the public domain.

Trademark Owners Must Always Consider Protecting Rights Outside the United States (Subtitled Anheuser-Busch Does Not Own the Rights to “Budweiser” in Portugal)

Any business owner that has spent the time and money to develop a trademark MUST consider protecting its trademark rights in countries other than the United States if there will be foreign sales.

The need to do so was highlighted once again by recent litigation proceedings in Portugal over ownership of the rights to the Budweiser trademark for beer. Given the immense fame and popularity of the Budweiser brand of beer throughout the world, most people would think it would be a no-brainer that Anheuser-Busch would own rights to the Budweiser mark everywhere. Not so.

Portugal’s Court of Appeal recently ruled that Anheuser-Busch cannot secure registrations for the Budweiser mark in Portugal because a company named Budejovicky Budvar NP already registered the mark there. (As a side note, these brewers have been battling over the “Budweiser” name for decades. Both companies began brewing beers named after the Czech town of Ceske Budejovice in the 19th century.) By its ruling, the court ruled that Anheuser-Busch had failed to demonstrate that its use of Budweiser was well-known in Portugal.

As another side note, Anheuser-Busch’s experience in Portugal parallels our firm’s personal experience litigating trademark rights in Portugal. Several years ago, we represented a very well-known skateboard shoe company in its trademark matters, including foreign distribution agreements and foreign trademark protection. While we were in the process of obtaining foreign registrations, one of our client’s distributors registered our client’s trademark in Portugal and then used its registration to have tens of thousands of pairs of valuable shoes impounded at the port of entry into Portugal. Even though our client’s trademark was very famous throughout the world, we were not able to overcome the distributor’s registration so our client had the abandon the entire country of Portugal as a potential market.

What many trademark owners do not realize is that there is a big difference between how trademark rights are acquired in the United States and how they are acquired in many foreign countries. In the United States, priority of rights arises from priority of use, not priority of registration in most cases. In contrast, in many foreign countries, the first to file a registration application can acquire priority of rights even though it may be the junior user.

Any trademark owner contemplating foreign sales should consult with trademark counsel about possible foreign protection of trademark rights. The good news is that it currently is significantly easier to obtain foreign protection that it used to be. In the “old days,” a trademark owner often had to file individual applications in the countries where it wanted protection. Now, various international treaties have significantly streamlined the process.

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