One of our arts and entertainment attorneys, Caroline Kert, was recently asked to address a group of local artists and arts organizations regarding Protest Art. She covers protester rights as well as the boundaries of free expression. This is a must watch for artists and dissenters in the current political climate. Contact Caroline Kert at email@example.com for more information.
You can watch the full presentation here:
A “trademark” is any word, name, slogan, symbol, or combination thereof, including packaging, configuration of goods or other trade dress, which is adopted and used to identify goods or services, and to distinguish them from goods or services offered by others.
The primary goal of trademark law is not to establish an exclusive property right in the mark, but rather, to protect consumers from confusion in the marketplace. Thus, your trademark rights are violated if someone else is using your mark (or a mark confusingly similar to yours) in a way that is likely to cause confusion to existing or potential customers.
Technically, “trademark” is the term to use for tangible goods and products and “service mark” or “servicemark” is for non-tangible services, but nearly everyone, even trademark attorneys, use “trademark” for both categories.
“Common Law” Trademark Rights
Many people believe you can only have a trademark if you file for a registration, but this is not true!
Trademark rights can be established under common law simply by being the first use a mark for a business endeavor. Your common law trademark rights extend as far as the geographic area in which you use your mark.
For example, if Roger started a plumbing business called Roger’s Parts & Plumbing in 2002 and has continuously used the name “Roger’s Parts & Plumbing” in the Denver metro area ever since, he will have likely established a legal right to “Roger’s Parts & Plumbing” under common law in the Front Range.
If, in 2017, Judy tries to start a plumbing business in Denver called “Roger’s Parts & Plumbing”, Roger could use his trademark rights to legally stop Judy from doing so. Consumers would be confused about which “Roger’s” business is which. Plus, the new “Roger’s Parts & Plumbing” could unfairly take advantage of the goodwill and reputation Roger has established over more than 10 years of business. These are the very problems trademark law was designed to address.
However, if Judy starts a plumbing business called “Roger’s Parts & Plumbing” in Durango, Colorado instead of Denver, nearly 350 miles away from where Roger operates, Roger might have trouble proving that his common law rights extend that far. Similarly, if someone starts a punk band in Denver called “Rogerzz Plumbing”, Roger would have to prove his trademark rights extend beyond the plumbing industry in order to stop the punk band from using that name to promote music and live shows.
Federal Trademark Registration
Registering your trademark, even if you have established strong common law rights to the mark, is always advised. This allows you to provide notice to the world that you are using the mark, and affords you certain statutory rights and protections as well.
The U.S. has a two-tiered system of trademark protection: federal and state. A federal registration issued by the U.S. Patent & Trademark Office (USPTO) give the registrant rights through the entire United States. A state registration will grant rights within that state’s boundaries only.
Generally, in order to file for a registration with the USTPO, the trademark’s owner first must use or plan to use the mark in “interstate commerce.” This means the mark is used on a product or service that crosses state lines or that affects commerce crossing such lines (for example, an Internet business that caters to interstate or international customers).
At first glance, registering a mark with the USPTO appears to be a relatively simple process. It requires a completed application, a specimen, and a statutory filing fee.
However, doing some research before spending the cash on the filing fee, which can range from $250 to $375 or more depending on the type of application submitted and how many class of goods or services you want to list for your mark, is strongly recommended. This is because all applications will be examined by a USTPO Trademark Examiner for registrability under the Lanham Act (15 U.S.C. § 1051 et seq.).
Some things CANNOT be trademarked under the Lanham Act. You are not allowed to claim the generic name of a product or a service itself as your trademark. Roger cannot trademark “Plumbing” or “Plumber” for his plumbing business.
You cannot register “clearly descriptive” marks, which are those made of dictionary words which describe some important characteristic of your product or service (e.g., “Delicious Apples” if you have an apple orchard business). You also cannot register “deceptively misdescriptive” marks (e.g., “Leather Shoes” for shoes that aren’t actually made of leather).
However, “suggestive” marks only give some vague idea about the products and services covered by the trademark, and are registrable. Sometimes the boundary between unregistrable clearly descriptive marks and registrable suggestive marks isn’t very clear. This can result in long disputes between applicants and the USPTO.
There are many other rules for what is allowed for registration under this Act, and if your application is rejected, you do not get a refund of your application fees. As such, consulting with a trademark attorney is advised before you begin the federal registration process.
If the Trademark Examiner determines your mark can be registered, it is then published in the USPTO Gazette, and if it is not challenged within 30 days of publishing, it will be registered. The total process can take 1 year at a minimum. After registration, you can use the symbol ® after your mark to show it has been federally registered.
Colorado Trademark Registration
Trademark registration under Colorado law is easier, faster and cheaper than federal trademark registration. It is used to protect a trademark within the state.
A Colorado trademark registration allows for a standard character mark (expressed in ordinary English letters, Roman and Arabic numbers, or punctuation, without any stylization) and a special form trademark (logos, pictures, design elements, color or style of lettering).
To file a Colorado trademark registration, you submit a Statement of Registration of Trademark electronically at the Colorado Secretary of State’s website with an attachment of your mark and the goods/services category your mark will be used in. The current filing fee is $30.
Unlike the USPTO, there is no examiner who is going to look at your application to make sure you have completed it correctly and that the mark is appropriate for registration under state law. Instead, when you file your application, you certify that in your good faith belief, you have the right to use the trademark in connection with the goods or services listed your application, and
your use does not infringe the rights of any other person in that trademark.
Colorado trademark registrations are effective for 5 years and may be renewed before expiration in successive 5-year terms. (Prior to May 29, 2007 however, Colorado trademarks were effective and renewed for 10 years.)
Obtaining a Colorado trademark registration does not authorize the use of the federal registration symbol ®. However you can use “TM” or “SM” (for a service mark) after your mark.
If you are interested in speaking with one of our attorneys about registering your trademark or stopping someone else from using your mark, give us a call.
 Section 7-70-101, et seq., C.R.S.
 Section 7-70-102(2)(f), (g), C.R.S.
 Sections 7-70-104(1)-(2), C.R.S.
 Section 7-70-109, C.R.S.
 Section 7-70-103(4), C.R.S.
Our guest contributor today, photographer John Uhr, posted this great analysis on Facebook of a current, local and much-publicized trademark dispute regarding the name “Open Studios.”
A quick background: Open Studios, established in 1995, is an arts-awareness and -appreciation organization based in Boulder, Colorado. Recently, the organization has been quite aggressive in its legal efforts to protect the name “Open Studios” in the Boulder area by asserting its trademark rights. This has impacted many artists in the area, including the Boulder Metalsmithing Association. Recently, Open Studios and the Boulder Metalsmithing Association are parties to a trademark lawsuit in federal district court here in Colorado. You can read Open Studio’s complaint, filed in August 2016, here.
October 10, 2016 at 11:17am ·
A funny thing happened this evening. Completely by coincidence, I made the acquaintance of Open Studios board-member and attorney, Howard Bernstein. He was discussing with Chris Brown (respected photographer and O.S. artist) a certain controversy surrounding Open Studios suing a small arts organization. Since I have a passing interest in the matter, I asked Mr. Bernstein a number of questions I had been wondering about and listened carefully to the answers. We spoke for around 45 minutes and at the end I inquired whether Open Studios would abide by the results of the upcoming mediation if it should go against them. His answer (after assuring me that Open Studios would most certainly win) was an emphatic “why would we?” ……more on our conversation as I have time.
Ok, It’s later …
This article reports on an unexpected conversation I had with Open Studios lawyer and board-member, Howard Bernstein. The conversation took place at about 6 PM Oct. 10th at Chris Brown’s photography studio and in the presence of Chris and Mr. Bernstein’s wife, who listened with interest and occasional interjections. If Mr. Bernstein disagrees with my characterization of his position, I would welcome his input. These are his words and position to the best of my memory. I would also like to add that I hold no enmity toward Mr. Bernstein and believe he has the best interest of Open Studios at heart.
1) Mr. Bernstein believes that due to the their many years of use of the term, good works, etc. that Open Studios owns the right to the phrase “open studios(s)” for promotion of events in all of Boulder County. I asked if an individual artist (such as Chris Brown) would be allowed to post a sign saying “open studio” and he indicated that he would. I took this to mean that they only wished to control usage by organizations, but didn’t pursue the point.
2) While Mr. Bernstein seemed very anxious to make this issue about Boulder Metalsmithing Association and its director/founder Beth Merkel, it was apparent that he believes that any organization in Boulder County using the term “open studios” is violating OS’s rights and that allowing them to continue would be irresponsible. He would very much prefer that other organizations voluntarily stop using the term and that litigation is a last resort if they refuse to stop using it.
3) Mr. Bernstein believes that Boulder Metalsmithing’s attempt to trademark the term “open studios” was clearly an attempt to get exclusive rights to it’s use (keeping OS from being able to use it). I suggested that it was simply an attempt to ensure that the phrase could continue to be used by anyone, in the face of Open Studio’s demands. I said that I and everyone I had spoken to would be equally against anyone else claiming exclusive rights to the term.
4) I pointed out that literally thousands of organizations use the term “open studios”, many of them for far longer than Boulder’s OS and that I could find no instances of any of them suing to keep exclusive rights, but Mr. Bernstein insisted many times that they were “forced” to take legal action. It was clear to me during the course of our discussion that OS is pursuing exclusive rights to the term and will oppose any use of it, using legal means if voluntary compliance is not forthcoming in the misguided belief that they are protecting OS and their artists.
A search for “open studios” reveals that virtually all other of the thousands of open studio organizations attach their open studios name to their location. “Open studio” is a common generic phrase, while “open studios Cornwall” provides the uniqueness commonly valued in a trade name. For the same reason, common descriptive phrases like “farmer’s market”, “art fair”, “film festival” are attached to a location like Boulder County, Pearl St, or CU International when used as an organization’s name. I suggested that a simple solution for OS would be to attach their name to “Boulder” or “Boulder County”. Mr. Bernstein emphatically rejected this idea seemingly because “open studios” had always been “open studios” and always would be. Tradition! The response is ironic because one of the main reasons Mr. Bernstein gave for preventing the use of the term by others is the potential for “confusion”.
Mr. Bernstein also seems to be overlooking a much greater potential source for confusion. If OS doesn’t claim “Boulder Open Studios” as a trade name, what prevents another organization from doing so, for instance, as a public forum for discussion of open studios issues and controversies? Talk about confusion!
It seems to me that Open Studios simply made an easily fixed mistake in not using the more appropriate, specific and descriptive name of Boulder Open Studios. Fixing this would do much more to avoid confusion than using a generic descriptive phrase and then being “forced” to prevent other organizations to stop using it.
To make things much easier for Open Studios to adopt this solution, I have purchased the tradename “Boulder Open Studios” and the domain name “boulderopenstudios.org”. I am offering these names to Open Studios free of charge if they will acknowledge that the term “open studios” is simply a common generic phrase which should be available for anyone to use.
What do you think of John’s solution? Do you agree with Open Studio’s attorney or is this a case of trademark bullying? This is certainly a case our intellectual property team will be watching!
During 2015’s Super Bowl halftime show, Katy Perry dazzled a worldwide audience of 118.5 million [http://www.billboard.com/articles/news/6458264/katy-perry-super-bowl-halftime-record] viewers, the largest halftime show audience in history.
During one segment of her performance, Katy was accompanied by several dancers in various beach-themed costumes, including two dancers who were dressed as sharks. When social media users commented en masse how the shark on the left (actually, Katy’s right) seemed to be incorporating its own moves instead of the planned choreography, a new Internet meme was born – Left Shark!
He became a symbol of individualism and doing things your own way.
Katy’s Trademark Application
Katy’s lawyers wasted no time attempting to capitalize on the meme. Eight days after the Super Bowl aired, they filed applications with the U.S. Patent and Trademark Office (USPTO) for the phrases “Left Shark,” “Right Shark,” “Drunk Shark,” and “Basking Shark,” as well as for a design of a smiling, cartoon, bi-pedal shark.
After a trademark application has been filed with the USPTO and gone through a preliminary review and entered into the offices data system, it is assigned to a trademark attorney. The Examining Attorney who reviews an application will send what’s called an action letter if he or she has come across one or more problems with your mark or your application that warrant rejections.
Katy’s examiner, David Collier, found a number of problems with Katy’s shark design application.
Foundationally, to get USPTO approval of a mark as a trademark, the mark must function to identify and distinguish the applicant’s services from those of others and indicate the source. However, Katy’s examiner found that the image of the shark only identified a particular character. He wasn’t able to see evidence that the shark identified or distinguished Katy’s live musical and dance performances.
Next, Katy’s design application also needed to include a specimen of her mark being used in commerce for live musical and dance performances. Katy submitted a photograph of herself on stage at the Super Bowl with the shark-costumed dancer. However, the shark in the photo and application’s shark cartoon design did not match.
Said the examiner: “[T]he specimen displays the mark as a stylized depiction of a forward leaning shark in nearly a front profile with a portion of a dorsal fin, two pectoral fins and two legs and feet substituted for the caudal fin on the tail. The shark has five gills, a full mouth with teeth and round eyes with eyelids; however, the drawing displays the mark as a stylized depiction of an upright shark in full front profile with no dorsal fin, two full pectoral fins and two legs and feet; the shark has three gills and the sharks mouth appears without teeth; the shark also has oval eyes without eyelids.”
The application for “Left Shark” fared better than the application for the design, but the examiner still wanted further clarification on the identity of goods for the marks. For example, one of the classes of goods or services listed on Katy’s application was “Plush toys, action figures, figurines,” but the examiner wanted more for “figurines.” Would they be made out of rubber? Stone? “[B]one, ivory, plastic, wax, plaster, wood?”
No Trademark for Katy?
The week Mr. Collier’s USPTO Action Letters were released, the media declared that Katy Perry had “failed” in her attempts to trademark the Left Shark and the Internet squealed with glee. In reality, the orders clearly stated Katy’s legal team still has the opportunity to fix the identified issues. If they are able to do so in the proscribed timeframe, her registrations will be published in the USPTO’s Office Gazette [http://www.uspto.gov/learning-and-resources/official-gazette]. Then, any opposers will have 30 days to file their oppositions with the USPTO. If no opposers come forth, the marks will be officially registered with the USPTO as trademarks.
However, due to the high-profile nature of this application, it will be interesting who emerges to lodge complaints against the marks. Will other artists or businesses see the USPTO opposition process a way to get some great publicity off Katy Perry and the grand saga of Left Shark?