Is That Even Legal?
Is That Even Legal?
Unraveling Trademark Mysteries: From Superheroes to Trademark Bullies
What happens when the iconic term "superheroes" loses its trademark status? Attorney Taylor Barlow from Davis Miles joins us to uncover the intriguing case of DC and Marvel's once jointly-owned trademark and how it fell into the public domain due to genericide. We explore the dynamic world of trademarks, revealing their role as essential source identifiers beyond just logos and names—extending to scents and sounds, such as Hasbro’s Play-Doh aroma and NBC’s famous chimes. Taylor shares fascinating examples of how trademarks shape brand identity and even touch on the potential for trademarking personal names if used commercially.
But the conversation doesn't stop there. We expose the notorious practices of "trademark bullies" like Monster and Apple, who use their financial clout to intimidate smaller businesses through costly legal battles. Hear about the struggles of entrepreneurs when faced with such aggressive tactics, including a revealing UK case against Monster. Taylor offers strategic advice for those caught in similar situations, highlighting the importance of being proactive and considering options like seeking declaratory judgments to fend off corporate giants. Get ready for a compelling discussion on the complexities of trademark law and the strategies entrepreneurs can employ to protect their brand identity.
Is that even legal? It's a question we ask ourselves on a daily basis. We ask it about our neighbors, we ask it about our elected officials, we ask it about our family and sometimes we ask it to ourselves. The law is complex and it impacts everyone all the time, and that's why we are here. I'm attorney Bob Sewell and this is season five of the Worldwide Podcast that explores that one burning question. Is that even legal? Let's go.
Robert Sewell:Today's guest on the show is Taylor Barlow. Taylor Barlow is an attorney at Davis Miles. He's a fantastic litigator and he has an emphasis in trademark and so I thought I'd have you on the show to talk about it, taylor. Welcome to the show. Thanks, bob, happy to be here. So what made me want to have you on was a recent case that came up and involved DC and Marvel, and what happened was there's a company and the company was using the term as an entertainment company, using the term super babies, and it just so happens that for decades, trademark that DC and Marvel had a trademark of superheroes, of superheroes, and they guarded their trademark fairly strongly over the years. And here we have this challenge and DC and Marvel said, yeah, we're not going to challenge that mark, and they lost their mark for superheroes. Did you hear?
Taylor Barlow:about that story? I did, and you know. What's funny about that story, Bob, is the whole purpose of a trademark is to identify the source of a good or service right. It's to identify to the consumer who's producing this product or service right. Dc and Marvel, famously competitors. They're not the same company. Dc is owned by Warner Brothers, Discovery and Marvel is owned by Disney, yet they share the rights in this trademark superhero. So it doesn't identify the source of any goods. It identifies two sources of the same service, which is strange to begin with. But yeah, you know, I'm not surprised that somebody finally came in and contested it.
Robert Sewell:Yeah, and I did find that odd too, that you know usually, when you have a trademark, you have one company that says hey, this is mine, this is what we do, we are the producers of X. And instead you have two companies who honed in on the same term and said no, no, no, no, we are the superheroes together and it's entered the public domain enough that they decided that it's no longer a trademark. Let's talk about it.
Taylor Barlow:In the trademark world you call that genericide. The trademark dies because it has become generic.
Robert Sewell:What is a trademark?
Taylor Barlow:Yeah, I mentioned at the top, it's a source identifier. It can be really any number of things. It can be typically a logo or a name or phrase or word, but it can be other things. It can be even a smell, a texture, it can be a color, anything that is used by a brand or a company to identify themselves as the source of that product or service. You know, you see, I mean we mentioned Marvel and DC, right? You see the DC logo and you know that those comic books or that movie is produced by the DC production company.
Robert Sewell:So one of the things I find fascinating is that you could trademark just about anything.
Taylor Barlow:Right, yeah, yeah. As long as it's used to identify a source, it can be a trademark.
Robert Sewell:But I could trademark a smell.
Taylor Barlow:That one is complicated. So you can trademark a smell as long as the smell isn't the whole purpose of the thing, right? So you can't trademark the smell of a cologne, because the whole purpose of a cologne is to smell nice. But you can trademark the smell of play-doh, and and they have, hasbro did uh, they trademark the smell of play-doh because when you open that plastic container you get the same exact smell every time and you can readily identify that as authentic play-doh that's amazing, I get.
Robert Sewell:What about a sound? Can I trademark a sound?
Taylor Barlow:yeah, and again back to the world of entertainment. It happens all the time. I mean, uh, thx, you hear that at the start of of the movie trailers, the, the slow crescendo, or dolby audio is another one. You, you hear these, uh, these sounds that readily identify their production companies. So, or nbc, nbc, right, you know those sounds it's a yeah, and but why?
Robert Sewell:why would they choose to trademark those sounds rather than something else? Don Couldn't they copyright it, or is that something?
Taylor Barlow:different. They can and a lot of times they do. Sometimes the sounds are too short. You can't take a three-note progression and copyright that and remove it from the public domain for other artists to use in their own compositions. But you can use it as a trademark because as a standalone they can readily identify those companies.
Robert Sewell:But could I trademark something like my name, I mean, if I became super famous? I mean mean, I am famous in my own mind, but if I became really famous like taylor swift. Could I trademark taylor?
Taylor Barlow:again, as long as it's used to identify the source of some good or service, absolutely you can. I mean, um, uh, I can't think of any off the top of my head here, but but there's got, there's a lot of names that that serve as brands. Right, ford, that was somebody's name and he used it to identify his, his cars and, and over time you know, it becomes associated as a, as a brand name. But yeah, as long as, as long as it is used to identify a source, or identify the source of of any good or service, you can do that.
Robert Sewell:There were. There was a famous trademark case in the UK where this is decades ago and I'm going off my memory here, but there's a famous trademark case in the UK where a man named McDonald wanted to have a restaurant that he named after himself McDonald's, mcdonald's and McDonald's said no way, but in the UK it worked out that they, the the guy, got to keep the name of his restaurant mainly because it was his name.
Taylor Barlow:It was his McDonald's restaurant yeah, there is some some exceptions. I don't know that that would fly in the US, because McDonald's has become what they call a famous mark. Once you're so ubiquitous and famous, you get some additional rights. But there are some exceptions for names. If it's your name and it's your company, you are the source. They generally give you some more leeway and exceptions to use your name as that brand leeway and exceptions to use your name as that brand, my esteemed producer, Paul Ward.
Robert Sewell:he wants me to trademark my hair like Conan O'Brien.
Taylor Barlow:Should I do that? Can I do that? You could? I mean, as long as it's a trademark hair, if you have some sort of distinct style and you're using it in your logo, you know, just like. Conan's hair itself isn't the trademark, it's the use of it in the show's logo.
Robert Sewell:Yeah, but it was so ubiquitous to Conan right. Yeah, but it was so ubiquitous to Conan right that giant sweep over and he put it up into his mark.
Taylor Barlow:Yeah other people probably could do the same.
Robert Sewell:You know, mr T probably could do it, hulk Hogan could probably do his mustache or his bandana, yeah his lack of hair there's people that could do it so okay, if I got a trademark and I want to protect it, what am I gonna do?
Taylor Barlow:So the interesting thing about trademark rights is you get them just by using them. You don't have to do anything formal to have trademark rights in the stuff that you're already using in commerce. If you have a business and you have a name and you're selling burgers under that name, you have trademark rights at common law. You have trademark rights at common law, right that common law meaning the law recognizes it without any sort of formal application or registration. But to have those rights nationally and to provide notice to the public nationally you have to go through a federal registration and application process through the USPTO, the United States Patent and Trademark Office. You submit your application, you show proof that you are using it in commerce and you wait a year, a year and a half, for the trademark office to review it and give their stamp of approval and issue your federal registration so I, you're.
Robert Sewell:Once in a while, you, you as an attorney. Your client comes in and says I just got this cease and desist letter. They say I'm, um, I'm, uh, the the. This guy says I'm violating this trademark. What do I do? What's going on here?
Taylor Barlow:Yeah, anybody in the food and beverage industry will get one of these at some point, from Monster, for example. Monster is the number one trademark bully in the country, if not internationally trademark bully in the country, if not internationally. They have anywhere from 70 to 150 oppositions going at any one time. So, yeah, you get these all the time. Now what you do in response depends heavily on the content of the letter, right? A cease and desist letter, just like any demand letter, saying you can't use the word monster in your toothpaste because we own monster and we make energy drinks. Well, I mean, there's not a lot of similarity there, and so my advice to that that client would be different than somebody who is making an energy drink and using the word monster to compete. So how you respond to a cease and desist letter in the trademark realm depends on they call them the DuPont factors.
Taylor Barlow:There are 13 different factors of how you assess similarities between two different trademarks, but they fall into roughly three categories, right? How similar are the marks themselves? How similar are the goods and services being offered under that mark and how similar are the trade channels? How you know, are these two companies going to be seen in the same avenue of trade. Right, if you go to the store, are you going to see them on the same shelf in the toiletry department? And so you assess those three factors and you decide you know what? Yes, there's risk here. No, there's not risk here. But that's if. If you're a monster, for example, again, it doesn't matter how similar you are they're going to bury you in legal fees because they want to assert their dominance in every category, whether or not they have the right to do that. So, uh, they they're. It's almost become part of their brand at this point. Right, they will. Right they will. They will bankrupt entrepreneurs, even if they don't really have a claim to do that so your advice could be is different.
Robert Sewell:You know your. I don't know if you really are violating the mark and you could proceed. However, just know that they'll bury you in legal fees.
Taylor Barlow:Yeah, you'd probably win that case, but you'd have to spend $100,000 to win it and is that worth it to you? That doesn't seem fair. No, it's absolutely not fair and the trademark office recognizes this. So does the federal circuit, but for some reason, monster has been allowed to continue that behavior. Um, they uh.
Taylor Barlow:There was a case I was just reading about uh again involving monster. I think they're one of the. The most interesting company was um in the in the uh in the UK again, but they were using the word beast in their uh in their beverage company. Now monster also owns uh, unleash the beast. Okay, that's uh one of one of their other trademarks, and they fought this guy for years and he was a small startup entrepreneur but he felt like he wanted to defend it. He felt like he had rights to that mark and he shouldn't have to close shop just because Monster says so. So he fought it for a couple of years and ended up winning.
Taylor Barlow:But in the UK and in most trademark cases, frankly, you don't get your attorney's fees if you're on the defense or you can get disgorgement of profits if you're a plaintiff, but for the defendant you don't get your attorney's fees. You can get disgorgement of profits if you're a plaintiff but for the defendant you don't get your attorney's fees. And so he spent about 80,000 pounds, uh, fighting this case and he said that was. I have to start over. That was all my capital and I'm essentially starting from square one now because of these legal fees, even though he won, and monster knows that right. So they keep doing this and they keep winning or succeeding rather than you know.
Taylor Barlow:So they do keep doing it and it's a sad reality. But you know, if I have a client that gets a cease and desist letter from Monster or some other trademark bully Apple is number two that my advice would be, probably, if it's cheaper for you to rebrand than it is to fight this, it might be better to rebrand. But in another case, if, if you have a smaller, you know a local contractor or something that is asserting those rights against you and maybe their, maybe their name is, you know, arizona contracting Okay, that's pretty generic. You know, if they're trying to assert those rights against you, sometimes my advice is throw that letter in the garbage. It's not even worth responding to it because there's no way in any court that they're going to win this if they even have the funds to bring a claim in the first place.
Robert Sewell:And if they do, then we'll address it at that time, tell me about the case SDCCU versus CEFCU. It's a really important case, I understand for understanding.
Taylor Barlow:This one, um, just came down in the ninth circuit last year. Um, the, the. The two entities here are banks. They're both credit unions. Uh, one is is the San Diego County credit union and the other one is a Citizens Equity. First Credit Union, the Citizens Equity came first.
Taylor Barlow:Their trademark is Not a Bank, better, a little bit of a tagline there the San Diego Credit Union filed an application for sorry, I might get these backwards, the names are a little bit similar, but anyway they have a trademark for it's not big banking, it's better. Okay, you can see the similarities but they're not exactly the same. So one, I think it's Citizens Equity, I think Citizens equity came second. So they are trying to get a trademark for their not a bank, better, the shorter one. And San Diego comes to them and opposes their trademark in the trademark office. Akin to a cease and desist letter, right, but a little bit more formalized. Akin to a cease and desist letter, right, but a little bit more formalized. They file an action in the USPTO to stop their application. We aren't privy to all the cease and desist letters that may have gone back and forth prior to this, but we know that there was at least a dispute.
Taylor Barlow:So what citizens' equity did in response to this opposition is they took a proactive approach.
Taylor Barlow:So, rather than sitting in the defense and defending the opposition and fighting it at the USPTO, they proactively filed what's called an action for declaratory judgment.
Taylor Barlow:Basically, they filed an action in federal court saying Judge, come on, take a look at this and tell them that I'm not infringing on their rights, so they, as the recipient of a cease and desist or as a potential defendant, you, rather than sitting back and waiting to get sued, you can be proactive and file an action to assert your rights and allow your application to continue unfettered from potential opposers.
Taylor Barlow:And that's what happened here and they ultimately won. They sought declaratory relief from the judge and they won, and then it went up on appeal and on some other issues they won, and then it went up on appeal and on some other issues. But that is a good example, I think, of how you know if you are, if you receive one of these cease and desist letters or you get a potential action from a trademark bully or some other potential plaintiff and you have a strong case and you want to do everything that you can to defend the rights in your trademark or your potential trademark. You can take a proactive approach, uh and assert those rights in advance that's interesting.
Robert Sewell:So so I get a trade, I get a cease and desist, and I go to Taylor and I say hey, Taylor, I got the cease and desist. Well, go ahead and file suit to find out whether or not you're wrong. That's what you're saying.
Taylor Barlow:Yeah, and you can, and that's a whoever's writing. The cease and desist has to be careful, because you want to strike this balance between being too kind right, and being too fluffy with your demands, and you know you don't want to be too overly aggressive either. If you're too overly aggressive, you may push the potential defendant into filing their own declaratory judgment action, and now you're the defendant and so your cease and desist has. Look how you're infringing, you know, and you need to stop so that there isn't a conflict here going forward. And if you're too light and fluffy, you're not going to get that outcome, and if you're too overly aggressive, you're going to force them to take action against you, which you don't want either.
Robert Sewell:So I'll say you will stop using the color red in the word whatever, Otherwise we're going to sue you, Right? Is that what you're trying to say?
Taylor Barlow:Don't do that Just say, we've established a trademark of X and we use the color pink. Yeah, what you really want to show is I mean, I mentioned the DuPont factors you want to show that, look, the marks are confusingly similar, the goods and services are similar, you operate in the same trade channels. And if you can show that your customers or potential customers have been actually confused, right, if you're getting reviews on your business website that are meant for the other party, or vice versa. Or if you're getting customers calling in or coming into your place of business and they're looking for the other, or again vice versa, those instances of actual confusion are incredible evidence and will go a long way in a cease and desist letter. They'll go a long way in court if it gets to that point, but in a cease and desist letter, if you can show that there's these instances of actual confusion, it will help make your case to the potential infringer.
Robert Sewell:Interesting. And is there ever a middle ground? I mean, it seems like you just stop infringing or you don't stop infringing.
Taylor Barlow:Yeah, yeah, I mean, it depends on the business, right? If, if I had a client who who offered you know one of those IV drip services where you go into the med spa or whatever and you you get hooked up to this bag and you get vitamins and electrolytes and things straight to your blood, and they had a trademark and it was federally registered and they wanted to shut down every other company that used a similar name in that narrow scope of goods and services. Right, we couldn't assert those rights against every med spa, we couldn't assert those rights against every you know vitamin supplement store. But if you're offering IV or intramuscular hydration under a similar name, then that's who we would assert those rights against. So what we would do is either get those people to change their name a little bit or stop offering that particular scope of services. So, yeah, we would find a way to compromise and if that potential existed, that's in the best, that's for everybody's benefit.
Robert Sewell:So we have national trademark laws and state trademark laws, but we could also look at how to enforce an international law, and there's treaties that we have for enforcing international trademarks, so it's a fascinating subject.
Taylor Barlow:Yeah, we call it the Madrid Protocol. There's an international treaty. Not every country, obviously, signs on to this treaty, but they do. They have agreed to recognize each other's trademarks and enforce them similarly.
Robert Sewell:Interesting. So if you're a business, you want to have a catchphrase. You want to have a catchphrase. You want to make yourself unique in the market. Do I just start using my catchphrase? Do I hire an attorney to find whether or not I'm going to be violating the trademark?
Taylor Barlow:What do I do? Yeah, it's always the question. It depends on how much you're going to be investing in marketing for that phrase or that trademark or that logo, whatever it is. If you're going to be investing significant sums of money and you're doing a nationwide marketing campaign or something like that, I would always recommend to do some due diligence up front. If you're a mom and pop restaurant and you have a tagline on your menu, then yeah, you can put the little TM signifier on your catchphrase and just start using it, knowing that, look, probably at worst you're going to get a cease and desist letter and then you can take it down at that time.
Taylor Barlow:But if you're creating a significant marketing campaign and generating lots of revenue under this brand, know that a potential opposer could come in and sue you for disgorgement of profits and anything that you've earned. That should have gone to them, right? If you're trading on somebody else's mark or somebody else's brand and people are confusing the two of you and that's business that should have gone to them, they may sue you for that business. That again should have gone to them. But yeah, it's a sliding scale. If you're a local shop and you're just using it as a fun tagline on your menus. Don't invest more into legal fees than you need to. If you're doing a nationwide campaign, do some due diligence.
Robert Sewell:So, taylor, I want to conclude with where we began. We talked about Marvel. Marvel let superheroes enter the public domain, and what that meant was it no longer was their mark. Is that a real concern for people?
Taylor Barlow:Yes, there have been companies that take an active campaign to avoid their marks becoming generic. There's a funny video on YouTube. You guys can look it up if you're listening. But listen to or look up Velcro's generic trademark video. They have a whole song and dance about reminding people what Velcro really is. And Velcro is a brand for the product known as hook and loop, a hook and loop fastener. The problem is hook and loop fastener doesn't really roll off the tongue like Velcro does.
Robert Sewell:Yeah right.
Taylor Barlow:There's a variety of these brands that have now become generic, because in common parlance it's just, they become ubiquitous, or the names are easier to say. You know chapstick for lip balm or scotch tape for I don't even know what else. You would call it um kleenex for tissue paper kleenex for tissues. Uh, you know all these. Uh, one one I think that has been successful in their anti-genericide campaign is xerox.
Robert Sewell:It used to be that you would call making copies making xeroxes yeah, because they were the first major brand to get their there's, but now as a society.
Taylor Barlow:As a society, we've somehow agreed that we don't call it that anymore. Now we call it making copies. Maybe because there's other competitors in the field, maybe because Xerox is more annoying to say than making copies, I'm not sure. But it's interesting to see which companies are successful in that campaign and which ones are not.
Robert Sewell:Okay, taylor, companies are successful in that campaign and others, and which ones are not. Okay, taylor, as you know, attorneys have a unique smell and we could trademark a smell. We know that they smell a little bit like rotten fish and athletic socks, so will you help me gain that trademark?
Taylor Barlow:You know what, if every lawyer in your firm has that same distinct smell and your clients come to recognize that, absolutely let's do it.
Robert Sewell:Okay, let's do it. If I needed to get a hold of you, how can I do that? If I need a trademark advice?
Taylor Barlow:Bob, I'm an attorney here in Davis Miles here in Arizona. You can reach me at the office. Bob, I'm an attorney here in Davis Miles here in Arizona. You can reach me at the office. It's 480-733-6800. And we'll talk about any trademark issues that you might have, Taylor thanks for coming on.
Robert Sewell:Thanks, Bob.
Robert Sewell:Thanks for listening to the podcast Is that Even Legal is now listened to in 100 countries and available on virtually all podcast platforms. Countries and available on virtually all podcast platforms. Leave us a review, send us some show ideas and do so at producer at even legalcom. Don't forget, as smart as we sound and as lovable as we are, we are not your lawyers and we are not giving you legal advice. But if you need some legal advice, get some. There are some great lawyers out there and we are always ready to help. See you next time.