You Can’t Say That!

From time to time, you may see someone on social media stating that no one can use his or her name without his or her permission. Some will go as far as to claim that by placing a © or a ® or a ™ after their name, that this allows his or her to sue anyone who dares to mention them by name. The problem is that people who make such wild assertions (unless they really have trademarked their name) generally have a poor understanding of copyrights, patents, and trademarks.

Trademarks exist to protect the consumer whereas patents and copyrights exist to protect intellectual property.

You Used A Word I Trademarked: Part I

When RadioShack® or Staples® or Best Buy® — or any store you can think of that — announces they sell Beats by Dr Dre™, Beats Electronics doesn’t threaten to sue even though Beats by Dr Dre is trademarked. That’s right.  Beat Electronics founders Jimmy Iovine and Dr. Dre are not going to set their team of legal beagles on those stores.

Oh, I know that last year, Dr. Dre and Beats Electronics were locked in a trademark battle and sued a rival for making products that might have confused consumers into thinking the competitor’s folding headphones were Beat Electronics’ folding headphones. Beat Electronics claimed that the competitor’s folding “headphones, color scheme, packaging, and overall advertising campaign directly infringes Beats’ trademark and patent rights.”

I also know that Beats Electronics is known for its aggressive and territorial stance with regards to other companies who file paperwork to register a trademark that incorporates the word “beat” or “beats” no matter what the context may be.

Beats Electronics went after Sony Computer Entertainment last year as well when Sony applied for a trademark for Sony toys, computers, and online games that dared to incorporate the word “beats.”

If you speak with most trademark attorneys, they are of the opinion that suing companies for using “beat” or “beats” as part of a trademark for music related goods and services is overreaching. But it doesn’t stop Beats Electronics from continuing with the action. And it doesn’t stop other companies from succeeding in trademarking what they file with the U.S. Patent and Trademark Office.

You Used A Word I Trademarked: Part II

And just because I’ve mentioned RadioShack® and Staples® and Best Buy® in this article, doesn’t mean that I’ve infringed on their registered trademark. After all, consumers aren’t going to going to get the idea that I have suddenly decided to go into the same business as RadioShack® or Staples® or Best Buy®.

Au contraire. It’s understood that context is king, and as such, the OpEd nature of this article is not a trademark infringement. It’s not a patent infringement. It’s not a copyright infringement. No matter how you slice it, what I’ve written has nothing to do with fringing on someone else’s intellectual property and it has nothing to do with confusing customers who patronize those businesses.

You Used A Word I Trademarked: Part III

Just because someone says their name is trademarked doesn’t necessarily mean that it is trademarked. Even if it IS trademarked, that doesn’t mean the person’s name cannot be used within specific instances.

Where the article is a matter of legitimate public interest, using someone’s name or likeness is neither exploitative or unlawful. What’s more, using someone’s name or likeness in an article that is of legitimate public interest is protected under the First Amendment of the Constitution of the United States.

If the person takes issue with what is written about him or her, this is not a case of trademark infringement. It may be a case of libel or defamation of character, but it most certainly is not a case of trademark infringement.

You Used A Word I Trademarked: Part IV

Words like Kleenex® — which was trademarked on July 12, 1924 and whose current registered owner of the trademark is Kimberly-Clark Corporation of Neenah, Wisconsin — is oftentimes used when the word ’tissue’ is what’s meant. Can this get you in trouble?

There’s such a beast as a generic trademark. It’s what happened to Aspirin after World War I when nearly any brand of acetylsalicylic acid was called “aspirin.” It didn’t take long before the trademark was being used without the capital A and it became a household word. It’s what Xerox® and Kleenex® are working hard to prevent that from happening to their respective trademarks. Why? Because losing control of one’s well-known trademark means that every company with a similar product benefits from the original owner’s loss.

Final Note

Where trademarks, copyrights, patents, et al are concerned, take the time to consult with a legal representative knowledgeable in this area of law. In the end, it could save everyone a lot of grief.

Elyse Bruce


4 Responses to “You Can’t Say That!”

  1. mutanatia Says:

    When do you effectively infringe on something? Also, in what manner do trademarks protect the consumer?

  2. Elyse Bruce Says:

    Many people are under the mistaken belief that as long as they don’t “make any money” from using copyrighted materials or as long as they include “no copyright infringement intended” that this exonerates them from being accused of copyright infringement. The Fair Use clause in the copyright laws in each country make it clear under what terms can copyrighted materials be used without infringing.

    And trademarks protect consumers by preventing service or product confusion between brands. Let’s say that you created a new computer operating system that was marketed in direct competition with the Mac OS X Snow Leopard. That’s healthy competition UNLESS you named your new computer operating system S’no Leopard in which case consumers could become confused as to which system was the system they were interested in purchasing. This is how trademarks protect consumers.

Leave a Reply

Fill in your details below or click an icon to log in: Logo

You are commenting using your account. Log Out /  Change )

Google+ photo

You are commenting using your Google+ account. Log Out /  Change )

Twitter picture

You are commenting using your Twitter account. Log Out /  Change )

Facebook photo

You are commenting using your Facebook account. Log Out /  Change )


Connecting to %s

%d bloggers like this: