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[Vic D'mise]

Hi -

there is a television show that I'm familiar with that has several trademarked words and personality names.  On a recent search I found that one of these names is unregistered.  This word/name is used to refer to a specific individual but is not his proper name.  Nor is it in public usage except in reference to this individual or the show.  In effect it has become his nickname.  

Can I tm this name?  And if so can I use it to any financial advantage?    

thanks

V

[Isaac]

Trademarks right arise from usage of a mark to identify goods and service in commerce.  The fact that the mark is unregistered is irrelevant to the inquiry of whether someone else is the first to do so.

So you cannot rip off someone else's mark solely based on the mark being unregistered.

[nobody]

Just because a copyrighted work uses a "fictitious" proper name, doesn't mean it automatically becomes a trademark though.

"Trademarks right arise from usage of a mark to identify goods and service in commerce.  The fact that the mark is unregistered is irrelevant to the inquiry of whether someone else is the first to do so. -- So you cannot rip off someone else's mark solely based on the mark being unregistered."

This example wouldn't apply to the described scenario, but... a brick and mortar business named "Gold's" in California, cannot claim trademark rights in New York, New Jersey, etc., unless they do business there, or have a federal registration. Therefore, if a business in New York is also named "Gold's" they might not have ripped off anything.

[T ony]

Well how abou this.... if he does register the mark he can hit the show producers and tv stations carrying the show with cease and desist letters, just to get the litigation ball rolling.  He doesn't even need an attorney to do that.  All he needs is to have them sit down and figure out how much in legal costs they are going to have to spend vs. paying him a reasonable price and putting the the whole thing behind them.

I bet they would pay closer attention to future marks after an episode like this.

I am considering doing the same thing.
What is the worst that can happen ? you lose $300-$600 in USPTO filing fees ? I think its worth a gamble.

All you need to bear in mind is that the bigger the company the more in legal fees they pay (just because they can) so paying you might be a cheaper alternative.

[JSonnabend]

The worst that could happen, Tony, is that he is counter-sued for bringing a frivolous law suit and forced to pay the TM owner's damages and attorneys' fees.  Can't pay those hefty sums?  Better find a good bankruptcy attorney.

Trademark law is not a tool for extortion.

- Jeff

[Tony]

Counter sued for frivolous law suit ?? sounds long and costly, which again plays into his hand of asking for the right amount, in order to have the unprotected party simply opt to pay him rather than pursue any type of litigation.  

Extorsion ?

Its not extorsion if he feels he has a legitimate claim to the name.  How do you figure that out ?  Litigation.

C'mon you don't need to go to law school for that.

[Isaac]

Besides litigation one might listen to his lawyer when he advised
that this course of action was a foolish waste of money.  Perhaps the
lawyer would also indicate his unwillingness to risk being
sanctioned along with the client for pursuing a baseless claim.

You don't have to go to court with an idiot scheme you
think might make money simply because you do not understand
trademark law.

[JimIvey]

Hi Tony,

These guys are giving you good advice.  You asked about the worst that can happen.  I'll outline a couple of likely scenarios.

First, consider that registration doesn't happen instantly -- it's takes a good year or two or even more.  The $300-600 you mentioned is probably for just filing the application, not going through the entire process.

If you're lucky, the Trademark Office will find the TV show's use of the mark and cite it against you and you get stopped there.  That's probably one of your better scenarios.

Suppose you go a little further: your application gets published for opposition.  If you're almost as lucky as before, the TV show files an opposition in response to the publication.  If you're wise, you'll drop it there.  Otherwise, you can have your own mini-ligitation in the Trademark Office and your chances of proving you were first to use the trademark over the TV show are pretty slim.

So, let's say you get even past publication without opposition and the Trademark Office is about to register your trademark.  Okay, now all you have to do is submit your sworn statement, under penalty of perjury, that you've used your trademark in interstate commerce and submit one or more specimens, examples of your mark as you've actually used it in interstate commerce.  Remember, the sham sales across a state border of the past is no longer accepted.  You have to use the trademark in the ordinary stream of commerce.

Even if you get this far (and I doubt very much that you would), in court, you're going to have to show (i) that you're the senior user (same issue you would have had to show in opposition) and that (ii) the mark wasn't registered in bad faith.  (Trademark guys, help me out on that -- I'm not sure about the senior user thing; maybe the defendant has the burden of proof but it seems fairly easy to prove in this hypothetical).

If you lose on the bad faith issue (and you're at substantial risk for losing there), there's a good chance you'll have to pay whatever the court thinks is reasonable attorney fees to the TV show.  If the court thinks you did a really bad thing (and there's a substantial chance of that), you may be required to pay punitive damages at whatever level the court thinks will teach you a lesson.

I really don't see much of a chance that you could come out of this experience unharmed.  I think you'd be better off taking your $300-600 and buying lottery tickets.

Regards.

[JSonnabend]

Tony, do you know what a "summary judgement" is?  C'mon, you don't need to go to law school for that, do you?  

[Tony]

Ok Guys

Believe it or not I have understood every single word of what you have said and comprehend the type of wrath that can be brought upon me if the other party should prevail in any type of legal proceedings.

But please pay close attention as I think you may have missed my core point.

How much is this large corporation going to pay for all of these proceedings, motions, briefs, discoveries, process servers, etc, etc.....

What I am saying is, that if his asking price is not  through the roof he can walk away with $25 - $30K by just simply showing them that the settlement is the most economic route and is in fact the path of least resistance.

Oh and please also bear in mind that in this theory a lawer for him would be more of a hinderance as the attorney would be bound by a myriad of ethical and conduct laws.  Not to mention the amount of money the law dude would cut from his bottom line.

If he has enough grasp of the legal process he can prevail.

Let me give you a case from the real world from an above averge Joe. (me)

A couple of years ago I detected an Argentinian firm making some pretty unique high tech products.
I knew that eventually their products would end up in the US as most products do anyway.  I filed and obtained the registration with the USPTO for the name and mark.

I registered with the US Customs Service as an intellectual property owner and guess what happened next ?  Their shipments started getting detained, as they were considered counterfeit.

My next step was to go to ICANN and filed complaint through their administrative process and got their internet domain transferred to me.

Can you say testes in a vice grip  ?

So call me an idiot for hatching "an idiot scheme" and you might be right, as I was laughing like an idiot and all the way to the bank on this deal.

For somebody that does not understand trademark law I did pretty good.

Oh and by the way I do know what a summary judgement is.  A judgment entered before a verdict, very common in frivolous lawsuits.  So you make your case meritorious and away goes the summary judgement.

The moral of the story is, that if you inform yourself enough and learn how the system works, you can file your own trademark, can enforce your own trademark and save big on legal fees.  I use attorneys as a last resort as it is not money well spent.

And if you see a money making opportunity you can go for it.  As an important end note It is an easier task to  usurp a the trademark of a foreign company than it is to take the mark of a US entity.

I gotta run, its been fun -- There is a Brazilian turbo manufacturer that is wide open and I need to run before its too late !!!!

[JimIvey]

Hmmm...  How'd you get past the pesky perjury issue on swearing you had a bona fide intent to use?  How did you get past the perjury issue when a statement of use was required?  Or did you actually sell stuff?

Let's say perjury and those pesky "felon" labels don't bother you.  Or, let's say you find some creative way around that (e.g., by actually selling similar goods/services to those of the shake-down victim).  I don't believe the cost of filing an opposition is any more expensive than your application filing costs.  I could be wrong, but I think the cost is comparable.  Most TV production companies have staff attorneys (paid a salary "just in case" -- y'know for libel, publicity rights, copyright, trademark, contract issues).  So, their real incremental cost of filing the opposition is probably no more than whatever the Trademark Office charges for filing of the opposition.

Your experience in South America is interesting.  But don't expect the same business culture here.  I used to work for a firm in which their client was surprised to find all their trademarks registered to a customs official.  Apparently, they hadn't done sufficient recon to learn that you had better register your trademark(s) before customs sees your products.

So, go ahead and try it.  Let us know how it goes.  I'd strongly recommend working out those perjury issues unless you don't mind doing a little time.

Good luck!

[Isaac]

I wonder if we are being "fished"

[JSonnabend]

Isaac, not only are we being "fished", but the guy is bald faced lying about his experiences.  And does he really think none of us understand the concept of "nuisance value" settlements?  Oh please.

[Ladislao Warcok]

Me being part of a large IP firm and being from Argentina I dont recall a case like that at all. I might be wrong though, Ill do some search and let you ppl know