Creative Leisure News

Answers to your troubling and tricky legal questions.

Protecting Your Trademarks

Use it (and defend it) or lose it.

By Eva-Marie Boyd (February, 2004)

(Note: Eva-Marie has been a practicing attorney for approximately 15 years. During that time she has been President of the Orange County Barristers, President of her law school alumni association, served on the Orange County Bar Association Board of Directors for seven years, and as chair of the Orange County Bar Association Legal Referral Committee for three years. She was a panel attorney for California Lawyer for the Arts and has lectured for that organization on copyright issues.)

Q. How do valid trademarks fall into the public domain?

A. By failing to monitor and protect them.

Last year I wrote an article distinguishing trademarks from copyrights. Copyrights protect items of the visual arts, recordings, writings, etc. Trademarks protect the names of goods and services such as McDonald�s, Chevrolet, and Microsoft.

While copyrights last 75 years from the death of the creator, trademarks have various procedures that need to be implemented to keep them alive.

Aspirin was once a trademark; now it is part of our everyday vernacular. It has become generic. I was asked if Dow Chemical could lose trademark for the word, Styrofoam. Yes, that possibility does exist.

Q. How do I protect my trademarks?

A. Stay in contact with the attorney who procured your trademark or another trademark attorney of your choosing.

In my own practice I have a client who lost the name of a mark most of you would recognize. She moved and failed to contact me for 10 years. When she did contact and I attempted to renew the name, I was unable to do so. Why? 1. Because the mark had not been timely renewed, and 2. Because she had "made no complaint" when others used the phrase with great frequency.

Within six years of receiving a mark, you must make a showing to the Trademark office that the mark is, in fact, still being used, and from then on file a renewal statement every ten years.

But that is not all; you must send cease-and-desists letters or sue others who are using the name for your category of goods. For instance, the name "Mousin� Around," which was filed in the proper craft category, would probably not prevent that name from being used for the name of a car.

There are 360 trademarks owned by Playboy Enterprises. I recently had a client who felt that "playboy" was a common, everyday term and he wanted to register Playboy Beach Club. I had to tell him that a snowball in hell would have a better chance.

Just this month a court ruled that Playboy Enterprises Inc�s trademarks "Playboy" and "Playmate" should be protected even in Internet searches that prompt pop-up advertisements. The defendants were Excite and Netscape. In its ruling the court noted that "the rules apply in the actual world with equal force to the virtual world �. Trademarks are not to be used in a way that is confusing or dilutes the value of the mark."

There are companies, which for a fairly nominal fee, specialize in "Trademark Watches" both globally and nationally. Something to consider is you have a valuable mark in need of protection.

(Note: Have any questions regarding copyrights, trademarks, or other business-related legal issues? Your name will not be used. Mail, fax, or email your questions to Eva-Marie Boyd, 1160 Catalina St., Laguna Beach, CA 92651 fax: 949-497-3148; email LAWDDAW@aol.com.)

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