Not all trademarks are created equal.  Some trademarks are ‘stronger’ in the legal sense than others, meaning that some marks are easier to register and enforce than other marks.  Trademarks need to be unique, distinctive, and not easily confused with other existing trademarks when they are applied to a product or service in order to be registerable with the United States Patent and Trademark Office (“USPTO”).

Trademarks are intellectual property that are classified into one of four categories of marks, based on how legally strong they are. The categories, listed in increasing strength, include: generic marks, descriptive marks, suggestive marks and fanciful or arbitrary marks.

Generic Marks

Generic marks are the weakest category of marks, and are not registerable or enforceable against others who use them. Generic marks are commonly used phrases associated with goods or services. Generic marks can either be generic at the outset of their use or become generic through improper use over a prolonged period of time. For example, using the mark SODA for sweet carbonated beverages would be a generic mark as the public associates the term “soda” with sweet carbonated beverages; the mark is considered generic at the outset of its use in this situation.

Marks that were once valid trademarks can further be reduced to a generic mark if the unauthorized use of the mark goes unpoliced. Distinctive, suggestive or fanciful or arbitrary marks can turn into unenforceable generic marks if the public commonly uses the mark in association with a particular good or service, and the trademark holder fails to police the use of its mark for an extended period of time. Common examples of once valid trademarks turning into generic marks include ZIPPER, ESCALATOR and ASPIRIN.

Descriptive Marks

Registerability and enforceability of descriptive marks is hit-or-miss, and that is why they are considered to be fairly weak marks. These types of marks describe some aspect of the product or service that the mark is being applied to. Descriptive marks fall into two subclasses: merely descriptive, and distinctive. Merely descriptive marks are not registerable, as they merely describe the product or services that the mark applies to (i.e., an image of brooms, vacuums and dusters for a cleaning service). However, a notable exemption allows descriptive marks that acquire distinctiveness to gain trademark protection. Distinctive marks can gain distinctiveness through extensive use in commerce for a period of 5 years or more.

Suggestive Marks

Suggestive marks are fairly strong marks, as they suggest something about the product or service to which they are applied, but do not describe the product or service. Some examples of suggestive marks include RAVISHING for a cosmetic line (suggesting that the make-up will make the user look ravishing).

Fanciful or Arbitrary Marks

The strongest marks are ones that are fanciful or arbitrary. These types of marks are easy to register and enforce based on their uniqueness.

• Fanciful marks are marks that are created from imagination. They have no definition in the dictionary, are completely unique, and are unusual. An example of a fanciful marks would be CHEMZA for use with selling hats. It is a made up word, with no significance other than being used as a trademark for selling hats.
• Arbitrary marks are marks that generally are a known thing applied to a completely different thing or service. Good examples of arbitrary marks include the mark KITTENS for use with hair accessories or MAJESTIC for weight loss management services.

For more information on the strength/distinctiveness of your mark, how to register a trademark or should you need advisement in an intellectual property matter, please reach out to our office.

American companies that are looking to take their products worldwide should seek to set up domain names overseas. With more than 250 country domain names, businesses will want to consider what markets are the most attractive to keep costs and paperwork down. Business experts recommend strategizing where you want to sell your products or services for the next three years.

Each country has its own Country Code Top Level Domains, also known as CCTLDs. Each country has its own standards, so that is why working with a skilled intellectual property attorney can help determine what legally needs to be done to get your domain up in the countries desired. Some countries require a trademark, others need local business registration, and some still require a company to have a local address to get that country’s domain attached. It is important to select a domain name that is not similar to a competitor’s name or trademark to minimize disputes.

But if you should find that someone else has taken your business’ name in bad faith and for their gain, an intellectual property lawyer can pursue the allegation of cyber squatting. Settling cross-border disputes involves showing that your business name is distinctive and that the domain name is being used in bad faith. Having a trademark already established can be crucial to protecting your business’ intellectual property.

A person or company might have obtained the domain name in bad faith, which could mean that they did so for no other reason than to resell it to you at an inflated price, to appear as though they are related to your business, or for economic gain off of your company’s good name. Cybersquatting costs $1 billion annually for U.S. businesses, reports CNN World. Countries have varying dispute resolution policies, so an attorney can help your business uphold your trademark, seek relief from the damages incurred, and halt the squatter from continuing to erode the business’ livelihood.

During the dispute resolution or court proceeding, you must show that you own a trademark that is the same or confusingly similar to the opposing party’s domain. It must be proven that the party that took the domain name has no legitimate interest in that name, and that it was registered and operated in bad faith. When these three points are evidenced, the domain name can be cancelled or transferred to the rightful trademark owner.

The Law Offices of Spotora & Associates had national and international experience in domain name and intellectual property disputes. Anthony Spotora is a respected Los Angeles intellectual property lawyer and Los Angeles business attorney. To learn more, visit https://www.spotoralaw.com/.

Los Angeles, Calif. – Companies put a lot of effort and money into their designs, sales and marketing tactics, so it is no wonder the Car-Freshner Corporation is aggravated by a company that is trying to use a similar tree design for its financial benefit. In a lawsuit against Stanislawski Marketing Ventures, who is doing business as Beck & Call promotional products, Car-Freshner alleges that the company “offers, markets, and distributes promotional air fresheners with a tree design that is indistinguishable from and confusingly similar to Car-Freshner’s distinctive Tree Design Marks.”

The case is currently underway in the U.S. District Court for the Northern District of New York, but it has repercussions that are relevant to businesses everywhere. The Car-Freshner Corp. has used the iconic tree symbol on its air freshener for more than 55 years. Numerous TV, movie, and pop culture references have used the tree fresheners and thereby created an even bigger impression on consumers. The lawsuit also lists Julius Sämann, the inventor of the air freshener who “spent five years extracting pine needle oils in the Canadian wilderness before he came up with the shape, name, and fragrance in New York in 1952.”

Car-Freshner Corp. has six registrations for its tree designs in a wide array of goods and services classifications and it further licenses those designs to third parties such as MasterCard, Samsung, Carnival Cruise Lines, and Buffalo Wild Wings. Car-Freshner Corp attests that Beck & Call not only created customizable tree design air fresheners for companies such as DirecTV but that their use of the tree design violates the Lanham Act and other trademark laws. From infringement, unfair competition, trading off the goodwill and reputation of Car-Freshner, and dilution of its unique tree design, Beck & Call has been slammed with it all.

The lawsuit goes to the core of trademark and intellectual property rights a business works hard to maintain, enjoy, and profit from. As such, businesses who secure legal counsel early on during product development stages and further work with their counsel to help them navigate through additional complex business and intellectual property matters often come out ahead of their competition.

In California, Los Angeles intellectual property attorney and Los Angeles business attorney Anthony Spotora provides critical legal guidance to businesses and individuals. From launching a product, analyzing business plans, and registering trademarks and copyrights, the Law Offices of Spotora & Associates is a trusted resource in Southern California and throughout the nation. They represent a wide array of industries as they research, protect, enforce, and defend their clients’ rights.

For more information:

www.spotoralaw.com

Law Offices of Spotora & Associates, P.C.

1801 Century Park East, 24th Floor

Los Angeles, California 90067-2302

P (310) 556.9641

F (310) 556.9642

Toll Free: (877) 4U-EZ-LEGAL

To learn more, visit https://www.spotoralaw.com/.

Before federal trademarks were enacted, most individuals and companies registered their marks with the state. State registration for trademarks is still available and less expensive, but with most companies and products wanting to be national, federal trademarks are worth the expense and added protection. In fact, unless a company plans on only selling their goods or services in the state – which is particularly rare with so many companies selling over the Internet – federal registration makes more sense for most businesses.

A business’ name is vital to its branding and sales tactics. Recently, the IP Watchdog magazine commented that trademark infringement is one of the top five mistakes that a startup company makes. As a company gets busy with all the other tasks to get sales and operations going, it can brush off critical steps that will protect the business’ identity, efforts, and assets. Every business can benefit from speaking with a qualified intellectual property attorney to do a full clearance search, to register, acquire, and enforce its trademark.

The current lawsuit of iCloud Communications v. Apple demonstrates the importance of far-reaching trademark protection. iCloud Communications is a Phoenix, Arizona based company that sells cloud computing telecommunication services, hardware, and software. They have used their trademark since 2005 and expended a lot of effort and money to establish, “goodwill and valuable rights in and ownership to the iCloud Marks in connection with computer telephony and electronic data transmission and storage services.” So it was to their surprise when Apple’s Steve Jobs unveiled a new telecommunications and data storage platform called iCloud on June 6 at the Worldwide Developer Conference.

IP and trademark cases usually favor the company that used the registered trademark first and are backed by evidence of how the trademarks were used in the state versus federal context. Already the Phoenix company says it is getting calls “from both existing and prospective customers regarding whether it is now owned or affiliated with Apple” and because of Apple’s extensive marketing machine, more people will associate iCloud with Apple than anything else. If true, it seems clear then that iCloud Communications can prove that there is not only a likelihood of confusion but, there is already actual confusion.

Trademark confusion, dilution, and disputes are serious matters and when a company must stop using its mark, all collateral, customer relations, and years of effort with that particular name must cease. Moreover, in federal courts, an infringer can be liable for three times the owner’s damages plus attorney fees and court costs.

In California, Los Angeles intellectual property attorney Anthony Spotora counsels many diverse businesses to set up, purchase, and maintain their trademark rights. The Law Offices of Spotora & Associates can help a company with basic trademark registrations and more complex matters involving a large portfolio of registrations both in the United States and abroad. Their accomplished trademark attorneys can protect and enforce your trademark and ensure it’s renewed within federal guidelines to strengthen your protection.

For more information:
www.spotoralaw.com
Law Offices of Spotora & Associates, P.C.
1801 Century Park East, 24th Floor
Los Angeles, California 90067-2302

Anthony Spotora is a Los Angeles entertainment lawyer and Los Angeles business attorney. To learn more, visit Spotoralaw.com.

Los Angeles, Calif. – Social media has now reached such a fever pitch in our society that people want to copyright their tweets on Twitter and Facebook posts. Los Angeles intellectual property attorney Anthony Spotora has received many calls recently for people wanting to copyright their words, sue others for copying posts, and for claims of social media defamation.

Right now copyright protection does not exist for social media users. Many of the sites’ terms of service policies show that by posting content an individual automatically grants the site to use, copy, display, and create a derivative work of any content posted or sent out. And should any site modify its rules, by simply using the site, the user consents to the new rules. Only in very rare circumstances can copyright protection be granted.

Case law shows that word count and originality do matter. As most posts and tweets are unoriginal – commentaries about a TV show, family outing, or breaking news – and factual, it is more difficult to establish its creativity and uniqueness. But certain celebrities command millions of followers and write catchphrases that become part of a social and product marketing frenzy. Also, accomplished and budding poets and writers can be well suited to writing haikus, for example, with Twitter’s 140 character limit. These individuals would not want to see their short yet brilliant works helping another person or company make a profit.

“What’s more practical is copyrighting a compilation of your tweets or catchphrases if they are legitimate enough to command protection for its commercial value or creativity,” said Spotora, who is the managing attorney at Spotora & Associates.

Copyright protection, should it be valid, does not get enforced automatically. An individual must register it with the U.S. Copyright Office to prevent use by a third party. Since most social media users don’t have valid claims, many of the social media sites have guidelines for software developers and reposting of material. Both Twitter and Facebook recommend that any posts or tweets to be republished should provide attribution of the author, maintain the integrity of the original content, obtain the author’s consent, and get permission if the content is to be made into a commercial product.

“Copyright protection is just one segment of the calls we’re handling right now,” Spotora said. “Others are calling about online partnership deals gone bad or instances where comments have defamed an individual.”

All of these scenarios have more legal repercussions and merit expert legal counsel. From his Century City offices off Santa Monica Boulevard, Spotora is well poised to keep updated about the intersection of new media, Internet, intellectual property rights, and the law. He and his team of senior-level attorneys represent both individuals and businesses with solid legal guidance and a hands-on approach.

For more information:
www.spotoralaw.com
Law Offices of Spotora & Associates, P.C.
1801 Century Park East, 24th Floor
Los Angeles, California 90067-2302

P (310) 556.9641
F (310) 556.9642
Toll Free: (877) 4U-EZ-LEGAL

To learn more, visit https://www.spotoralaw.com/.

If you are serious about the music you create as a composer, you should be serious about music licensing.

Music is everywhere in the world of entertainment: Movies, television, radio advertisements and commercials. There is always a need for top-notch songs and artists.

“For an upcoming composer, licensing music is a vital step in growing a career,” said Anthony Spotora, a Los Angeles-based entertainment and business lawyer. “Licensing music means that your creation is not only protected from illegal use but can also bring a source of income and bigger name recognition. If the people behind a commercial or feature film like your composition, for instance, they will request a music license for the piece.”

While music licensing can be lucrative, it is important to become educated about the process and to receive adequate representation to secure the best deals for oneself.

There are several options for music licensing. One of the best-known options is to register and become a member of ASCAP, BMI or SESAC, which are also known as performing rights organizations (“PRO”).

Such companies collect millions of dollars annually for composers and publishers for so-called performance royalties, but you must be registered as a member to see this income.

“Performing rights organizations act as middlemen, essentially,” Spotora said. “When a song is  ‘performed’ – this includes usage in commercials, airplay, etc. – the user pays the PRO rather than the copyright holder directly. The copyright holder is then paid a royalty by the PRO.”

A separate option is to connect with a publishing company. The publisher will handle issues such as music licensing, collecting royalties and negotiating licensing figures. If your publisher works hard and is well-connected, it can generate serious income for you as a composer and catapult your career to new heights.

If you are a composer, it is important you understand how to properly protect your music as well as secure the most desirable music licensing deals. For questions about legal matters pertaining to music licensing, contact an experienced entertainment attorney.

Anthony Spotora is a Los Angeles entertainment lawyer and Los Angeles business attorney. To learn more, visit Spotoralaw.com.

In today’s economic downturn, more and more businesses may be looking to alter their business models. Such a plan for change is often referred to as a corporate turnaround strategy.

With revenue streams suffering, it can be difficult to figure out what to do when your business is experiencing such disappointment. But with the few tips below, it is possible to develop a plan that will help you identify problems and alter the course of your business for the better.

1. If your business is experiencing problems and feels like it is in freefall, the first step to take before you do anything else is to seek stabilization. Take a look at what assets are critical for the survival of both the company and its ownership and then protect and preserve those assets.
2. Next, you need to undertake a lengthy and comprehensive identification period. You need to get back to finding out what your business is all about. What are the core values that your company holds? Who are your main customers, and are you continuing to provide them with goods or services that they want? What do you really stand for? Have you gotten away from your business principles?
3. Once you have answered these questions, you need to make an honest list of the core problems with your business. Seek input from not only management, but staff, too. What processes are counterproductive? What uncritical functions need to be scaled back? Remove the excess. Perhaps layoffs need to take place. Perhaps entire departments need to be scaled back. If it doesn’t fit with the core values of your business, it probably needs to go.
4. Put together an implementation plan for making these changes. Provide specifics on how these changes will be implemented. Develop a timetable for taking certain steps. Eliminate the chance of chaos by carefully explaining how the restructuring will take place.
5. Now you are ready for the actual restructuring. It will be all-important to follow the specified steps in your implementation plan.
6. Review your restructuring plan periodically and make updates and tweaks as necessary.

Undertaking a corporate turnaround can be a complex and stressful process. If your business is looking to complete a turnaround, it may also be helpful to hire a consult or an experienced corporate attorney who can offer a fresh set of eyes.

Anthony Spotora is a Los Angeles business attorney, intellectual property lawyer and entertainment lawyer.  To learn more, visit Spotoralaw.com.

Intellectual property is a complicated aspect of law, to be sure. It encompasses, among other things, copyrights and trademarks, and is intended to protect a variety of “creations of the brain.”

Copyright does not protect ideas, rather, but original literary and artistic works, musical pieces, discoveries, inventions, logos, designs, architectural creations, photographs and the like. The term “intellectual property” wasn’t used until the 1800s, though the foundation for the legal protection of intellectual property began centuries ago.

Section 106 of the 1976 Copyright Act generally gives the copyright holder the right to the reproduction of his or her work, to distribute copies or recordings for sale to the public, to perform or display the work publicly and to take other similar actions. The law also details “fair use,” which allows the use of copyrighted material for news reporting, criticism and other special cases.

Intellectual property also includes trademarks. Trademarks are protected by a sign or other indicator that can help distinguish one service-provider or goods manufacturer from another. The sign or indicator can include one or more of the following: a logo, a word or phrase and images. They are protected by the Trademark Act of 1946.

A trademark is essential because it serves to identify a particular business as the source of the service or goods. Registration of a trademark provides federal protection and a bundle of rights; however, use alone can establish common law rights. Those who infringe upon these rights can be subject to penalties.

Trademarks are registered in most countries and are also classified by the International (Nice) Classification of Goods and Services into 45 Trademark Classes. Numbers 1 to 34 concern goods, while numbers 35 to 45 concern services. For a trademark to be registered, it has to be original and cannot be deceptive or similar to trademarks that have already been registered.

Copyrights and trademarks are an essential part of many businesses. And in today’s world, when the rights of creators are being threatened by so many advances in technology, it is important to protect your creations.

If you are looking to file copyright or trademark papers, or believe that someone else has stolen your work or trademark, it is essential that you hire an experienced attorney.

To learn more, visit https://www.spotoralaw.com/

Does the buying of keyword advertising trigger trademark infringement lawsuits?

The short answer is “yes, it can.” But while there have been many instances of such matters being aired in court, judges across the country have struggled to keep current with the matter and have issued less than uniform guidance. To understand the keyword advertising dilemma, it is important to first understand what keyword advertising is.

Keyword advertising, a multibillion-dollar business, refers to paid advertising on the Internet that links specific keywords or groups of keywords. If you have ever used the Internet search engine Google, you know that typing a phrase such as “sporting goods” into the search area would produce advertising links for sporting goods providers on the side of the screen.

Companies pay for the right to certain words so that customers click on the advertisements that lead to their Web sites. Often, companies pay for each “click-through” that is generated. But the controversy with this type of advertising occurs when companies buy a keyword that is part of a competitor’s trademark, bringing into play the Lanham Act.

In part, the Lanham Act is meant to protect the holder against those who “without the consent of the registrant, use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.”

To establish that keyword advertising violates the Lanham Act, it has to be proven that the trademark was actually used and that the general public would be confused about who is offering the goods or services in question.

Second Circuit courts have often found that the use of a keyword on its own is not a violation of the Lanham Act. Yet outside the Second Circuit, courts have often found the opposite to be true.

For example, in April 2008, the Eleventh Circuit ruled against a company who used a competitor’s trademarks within its invisible meta tags of its website. The court ruled that such practices were in fact trademark infringement.

Microsoft, Google and Yahoo! all sell keyword advertising and have been dragged into some Lanham Act court cases.

When it comes to companies protecting themselves against competitors misusing keyword advertising, it is important to track how your trademarks are being used on the Web. When a violation is suspected to have taken place, one should complain to a search engine, many of who often have their own complaint procedures in place. Experts also recommend that companies make sure they are the highest bidder for their advertising keywords that represent their trademarks to prevent others from using them.

To learn more, visit https://spotoralaw.com/.

Your business has a great name, logo and slogan to stimulate brand recognition. Are those creations copyrightable?

One of the most common questions an intellectual lawyer gets asked relates to copyrighting a brand name, title or a logo. Is it possible to copyright those creations? The short answer is no, and in fact, brand names, short phrases, business names and slogans are explicitly excluded from protection; something that usually comes as a significant disappointment to businesses hoping to protect their identities.

The exclusion is actually quite wide and is applicable to any kind of a title, short ad expression, catch-phrase or name. Let’s say your forte was collecting and writing about recipes the great chefs of the world made famous. There are a lot of people who would copy those recipes and give them a whirl. Isn’t that a copyright violation? In the instance of labels, formulas, recipes and ingredient lists, the answer is they are not protected by copyright. However, the text with the directions, explanations and other descriptions may be eligible for copyright. Tread cautiously.

What about a person who wants to use a name in business/commerce? This is different. Business names, brand names and even slogans may be protected. Trademark law says those things are protected if and when they are used in commerce to make a product stand out from someone else’s. Just to throw a spanner into the works, trademark law also says you have exclusive rights to a trademark if you are the first user (under certain conditions). You would need to speak to an intellectual property lawyer about this to find out how it may apply to your circumstances.

In general, there is some trademark protection available automatically if you use your marks in commerce/business. But you still need to register a trademark federally in order to be covered nationwide.

Just to backtrack a bit, that bestselling cookbook about the world’s greatest chefs has recipes and formulas in it, and they aren’t protected by copyright or trademark law. If you want to protect them, you either have to consider that they are trade secrets, or patent them. To that end, you can only patent a recipe or formula if it is new and not just a combo of things already in existence. Drug makers pull that kind of stunt all the time by combining two existing drugs into one and calling it a new drug.

What about the recipe for Pepsi or Dr. Pepper? While these two drinks are recipes, their origin is a formula and is therefore a trade secret. That means they’re protected indefinitely just so long as no one exposes them. A patent would grant up to 20 years protection. If you don’t know if your product or other good may be copyrightable or qualify for a patent, ask an intellectual property attorney. Finding out now saves potential litigation grief later.

Anthony Spotora is a Los Angeles business attorney, intellectual property and entertainment lawyer.  To learn more, visit Spotoralaw.com.