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[johnathon]

HI I own a registered US and Canadian trademark for for my bandname and have stopped a major label dead in its tracks from releasing a foriegn act which is still being being pushed by WEA in other territories in Scandidavia, and by MTV northern Europe.
My first question is even though the band is foriegn based can I still confront WEA International on willful infringement ( we already sent them a warning letter) as an American based company who's subsidiary is in all likely returning profits to the home office?

Question 2.
Here's a good one - Can a band place the word "THE"
in front of  my registered trademark and say their tradename is unique and not infringing? They are also coming up in online commerce sites without the "The" in their name which may  not their fault.


peace,
Johnny

[Isaac]

I would not expect a nationally registered trademark to be enforceable outside of the country of registration.   I also don't see anything illegal about a US company from receiving profits from an act that performs outside of the US.

If they band advertises in ways that reach US customers or there act is offered through channels which reach the US, then perhaps something actionable is occuring.

I wouldn't speculate on whether a mark was infringing without knowing what marks were involved.   Perhaps you should not post the details here.

[johnathon]

OK-hypothetically
Theres a recording artist called "Coke" who has US mark class 9.
And then come along "The Coke" selling CDs at popular
online store!
Infringement?

[Isaac]

Coke is a famous mark that most likely neither band can use without diluting the mark of the senior user.

I am not offering to research hypothetical marks and you don't want to post the actual details here.  If you have a financial interest in your mark, perhaps a short consultation with a trademark attorney in your own jurisdiction is in order.

[johnathon]

Alright then good point, so lets substitute "Coke" with "Dealer"(which is not registered at the uspto) but let us just say that the recording artist Dealer has registered it in the US for sound recordings (class 9)
and so alongs comes another US band called" The Dealer" with a big fat record contract.
Now I have talk to few lawyers about this and their opinion have been polar opposites,
I dont know if this is because of different interpretation
of US trademark laws or lack of case examples.
I bring such a question to this forum to see if any persons have  heard of similar case and what the outcome was.
I think this is an important issue because I see this happening  alot in the music industry  more so with UK bands coming to America as it is popular for UK bands to  place "THE" in the bandname to create an air   plutocratic superiority.
BTW Issac you said NOT to post details which is a good policy for this site.

[M. Arthur Auslander]

Dear Johnny,

If you put out a cola beverage with "The" before Coca Cola how long do you think before you would be in trouble?

[johnathon]

Probably faster than u could enjoy a swig of your newly created non sugar  non sparkling health drink "THE COKE"
So i assume Arthur , even a not so famous mark would be protected by this logic.
But i still have not seen a case sample though for a bandname infringment  with THE in the mark.
However lets look at a famous band name say "The Beatles" which is registered to the Apple Corp  USPTO trademark reg #1752120
Seems fine and dandy but now if you look at their USPTO
file, you will see that the Apple Corp have also made the decision to trademark just "BEATLES" class 09(among many more)USTPO serial#75921156
Although it seems to be suspended for some reason(?) there must have been a reason for Apple Corp lawyers to seek protection in the first place for just "Beatles".
WHY?
Did Apple Corp feel that their mark did not have enough protection?
Any thoughts on that?

[M. Arthur Auslander]

Dear Jonathan,

The trademark law protects against, "..likelihood of confusion". There are many different classes that may not be confused. There is commom law, the law of unfair compeition and some antidilustion law.

If you are going to fiddle with small differences between well known marks you are at risk, if the originator of the mark has the money to give you a hard time even if they are wrong. Can you afford legal fees to go to court, even if you are right?

[johnathon]

First of all,
I own   US registered trademarks  (Class 09- sound recordings and the final formalities for class 41)and  are being infringed upon by   third parties and the infringer
who are just putting "THE" on my trademarked bandname.
It is to the point that it is causing confusion in US based search engines and popular music download sites and record stores carrying their product.
I just  want to make sure that I can  put a halt to this before i  spend a vast amounts of money on a lawyer-
that is the bottom line!

[M. Arthur Auslander]

Dear Jonathan,

If you have something good, why have you not STARTED with competant professional advice that you can trust?

Trademarks are not expensive. Patents are.

[Isaac]

Johnathan,

If there is money involved I'd recommend a short meeting with a lawyer versed in trademark law.   Maybe after listening to him (possibly without spending any significant bucks) you can get a better appreciation of what your options are.

Unfortunately your IP rights often extend only as far as you are willing to defend them.  Maybe an initial contact from a lawyer can get the offenders to quit.  

But first you need to sort the story on your mark.   I can imagine some cases where 'The' might create a significantly different mark and other cases where it would not.  You need an answer that works for you and your mark.

[johnathon]

Isaac,
If they were for product in different classess such as
cosmetic products vs. sound recordings,
I see them existing happily in market land.
How about if  there are 2 products on my coffee table,
both music CDs each with just about 1 hour of music one cost 18$,
the other 28$. The genre of music on the 28$ is avante guard music made by machines, the other 18$ being rock n roll with a little bit of machine help.
The artist name on the front cover of the 18$ is just a noun
the other 28$CD, has the word THE before the exactly same spelled singular noun. The singular noun now becomes a  noun that is generic.
So would my girl pal down the hall in my apartment complex think they were from the same artist and be confused when she played them while cleaning my house?
I believe they are still too similar and would create confusion in the marketplace, ie.- search engines on a digital download site that would find both or just go the
("THE" NOUN) music sales site. So someone looking for
previous releases of the NOUN artist might think the (THE NOUN)artist  is really the NOUN artist and buy it.
and if the NOUNartist had a letter from of fan who was contemplating  buying this (THE NOUN) artist now that would be even more confusion in this twisted tale!
I would say It qualifies under the Landham act..  "as unauthorized use of a registered trademark in respect of the same or similar goods or services for which the mark is registered.

Patents are expensive but do some trademarks have greater value than some patents?

My arm is growing!

[Isaac]

Jonathon,

Your analysis of when two similar marks can coexist is too simplistic.  As an extreme example, I don't think you can use the mark "microsoft" in any category regardless of how separated your product is from any other product.

The analysis of whether two trademarks are confusingly similar is involves a number of factors (approximately 8 or so).  Your hypotheticals speak to a few of those factors but there is not enough info for me to take a shot at answering your question.

Certainly some trademarks can be more valuable than some patent.  Many patents are essentially without commercial value.

[johnathon]

Isaac thanks for the valuable discussion on this matter.
I have a new lawyer who's on the case and he agrees the marks are too similar and combined with blatant infringement of my mark at music websites i have a strong case.
In fact it  appears the infringer may have been fully aware of their infringement activities.
So what are the 8(or is it 9) factors?

[Isaac]

I'll try to list as many as I can from memory.  Different jurisdictions use slightly different ones.  These factors are considered in evaluating whether there is a "likelihood of confusion" between two marks

1. Degree of similarity between marks
2. Strength of the senior mark
3. Similarity of markets for goods of each mark
4. Sophistication of customers for the goods
5. Junior party's motivation or bad intentions in selecting his mark
6. Plans of senior mark holder to expand into market of junior mark holder
7. Similar channels for advertising using the mark
8. Evidence of customer confusion in the marketplace

I think I'm missing at least one factor...