February 21, 2025 • 32 mins
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.
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Episode Transcript
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Robert Sewell (00:04):
Is that even legal?
It's a question we askourselves on a daily basis.
We ask it about our neighbors,we ask it about our elected
officials, we ask it about ourfamily and sometimes we ask it
to ourselves.
The law is complex and itimpacts everyone all the time,
and that's why we are here.
I'm attorney Bob Sewell andthis is season five of the
(00:26):
Worldwide Podcast that exploresthat one burning question.
Is that even legal?
Let's go.
Today's guest on the show isTaylor Barlow.
Taylor Barlow is an attorney atDavis Miles.
He's a fantastic litigator andhe has an emphasis in trademark
(00:46):
and so I thought I'd have you onthe show to talk about it,
taylor.
Welcome to the show.
Thanks, bob, happy to be here.
So what made me want to haveyou on was a recent case that
came up and involved DC andMarvel, and what happened was
there's a company and thecompany was using the term as an
(01:09):
entertainment company, usingthe 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 stronglyover the years.
And here we have this challengeand DC and Marvel said, yeah,
(01:35):
we're not going to challengethat mark, and they lost their
mark for superheroes.
Did you hear?
Taylor Barlow (01:43):
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 thesource of a good or service
right.
It's to identify to theconsumer who's producing this
product or service right.
Dc and Marvel, famouslycompetitors.
(02:05):
They're not the same company.
Dc is owned by Warner Brothers,Discovery and Marvel is owned
by Disney, yet they share therights in this trademark
superhero.
So it doesn't identify thesource of any goods.
It identifies two sources ofthe same service, which is
(02:26):
strange to begin with.
But yeah, you know, I'm notsurprised that somebody finally
came in and contested it.
Robert Sewell (02:34):
Yeah, and I did find that odd too, that you know
usually, when you have atrademark, 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 twocompanies who honed in on the
same term and said no, no, no,no, we are the superheroes
(02:55):
together and it's entered thepublic domain enough that they
decided that it's no longer atrademark.
Let's talk about it.
Taylor Barlow (03:07):
In the trademark world you call that genericide.
The trademark dies because ithas become generic.
Robert Sewell (03:16):
What is a trademark?
Taylor Barlow (03:19):
Yeah, I mentioned at the top, it's a source
identifier.
It can be really any number ofthings.
It can be typically a logo or aname or phrase or word, but it
can be other things.
It can be even a smell, atexture, it can be a color,
(03:41):
anything that is used by a brandor a company to identify
themselves as the source of thatproduct or service.
You know, you see, I mean wementioned Marvel and DC, right?
You see the DC logo and youknow that those comic books or
that movie is produced by the DCproduction company.
Robert Sewell (04:09):
So one of the things I find fascinating is
that you could trademark justabout anything.
Taylor Barlow (04:17):
Right, yeah, yeah .
As long as it's used toidentify a source, it can be a
trademark.
Robert Sewell (04:24):
But I could trademark a smell.
Taylor Barlow (04:28):
That one is complicated.
So you can trademark a smell aslong as the smell isn't the
whole purpose of the thing,right?
So you can't trademark thesmell of a cologne, because the
whole purpose of a cologne is tosmell nice.
But you can trademark the smellof play-doh, and and they have,
hasbro did uh, they trademarkthe smell of play-doh because
(04:51):
when you open that plasticcontainer you get the same exact
smell every time and you canreadily identify that as
authentic play-doh that'samazing, I get.
Robert Sewell (05:03):
What about a sound?
Can I trademark a sound?
Taylor Barlow (05:06):
yeah, and again back to the world of
entertainment.
It happens all the time.
I mean, uh, thx, you hear thatat the start of of the movie
trailers, the, the slowcrescendo, or dolby audio is
another one.
You, you hear these, uh, thesesounds that readily identify
their production companies.
(05:27):
So, or nbc, nbc, right, youknow those sounds it's a yeah,
and but why?
Robert Sewell (05:37):
why would they choose to trademark those sounds
rather than something else?
Don Couldn't they copyright it,or is that something?
Taylor Barlow (05:46):
different.
They can and a lot of timesthey do.
Sometimes the sounds are tooshort.
You can't take a three-noteprogression and copyright that
and remove it from the publicdomain for other artists to use
in their own compositions.
But you can use it as atrademark because as a
(06:10):
standalone they can readilyidentify those companies.
Robert Sewell (06:17):
But could I trademark something like my name
, I mean, if I became superfamous?
I mean mean, I am famous in myown mind, but if I became really
famous like taylor swift.
Could I trademark taylor?
Taylor Barlow (06:33):
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 thinkof 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 wassomebody's name and he used it
(06:58):
to identify his, his cars and,and over time you know, it
becomes associated as a, as abrand name.
But yeah, as long as, as longas it is used to identify a
source, or identify the sourceof of any good or service, you
can do that.
Robert Sewell (07:18):
There were.
There was a famous trademarkcase in the UK where this is
decades ago and I'm going off mymemory here, but there's a
famous trademark case in the UKwhere a man named McDonald
wanted to have a restaurant thathe named after himself
(07:40):
McDonald's, mcdonald's andMcDonald's said no way, but in
the UK it worked out that they,the the guy, got to keep the
name of his restaurant mainlybecause it was his name.
Taylor Barlow (07:52):
It was his McDonald's restaurant yeah,
there is some some exceptions.
I don't know that that wouldfly in the US, because
McDonald's has become what theycall a famous mark.
Once you're so ubiquitous andfamous, you get some additional
rights.
But there are some exceptionsfor names.
If it's your name and it's yourcompany, you are the source.
(08:17):
They generally give you somemore leeway and exceptions to
use your name as that brandleeway and exceptions to use
your name as that brand, myesteemed producer, Paul Ward.
Robert Sewell (08:31):
he wants me to trademark my hair like Conan
O'Brien.
Taylor Barlow (08:39):
Should I do that?
Can I do that?
You could?
I mean, as long as it's atrademark hair, if you have some
sort of distinct style andyou're using it in your logo,
you know, just like.
Conan's hair itself isn't thetrademark, it's the use of it in
the show's logo.
Robert Sewell (09:00):
Yeah, but it was so ubiquitous to Conan right.
Yeah, but it was so ubiquitousto Conan right that giant sweep
over and he put it up into hismark.
Taylor Barlow (09:14):
Yeah other people probably could do the same.
Robert Sewell (09:17):
You know, mr T probably could do it, hulk Hogan
could probably do his mustacheor his bandana, yeah his lack of
hair there's people that coulddo it so okay, if I got a
trademark and I want to protectit, what am I gonna do?
Taylor Barlow (09:43):
So the interesting thing about
trademark rights is you get themjust by using them.
You don't have to do anythingformal to have trademark rights
in the stuff that you're alreadyusing in commerce.
If you have a business and youhave a name and you're selling
burgers under that name, youhave trademark rights at common
(10:04):
law.
You have trademark rights atcommon law, right that common
law meaning the law recognizesit without any sort of formal
application or registration.
But to have those rightsnationally and to provide notice
to the public nationally youhave to go through a federal
registration and applicationprocess through the USPTO, the
(10:25):
United States Patent andTrademark Office.
You submit your application,you show proof that you are
using it in commerce and youwait a year, a year and a half,
for the trademark office toreview it and give their stamp
of approval and issue yourfederal registration so I,
(10:52):
you're.
Robert Sewell (10:52):
Once in a while, you, you as an attorney.
Your client comes in and says Ijust got this cease and desist
letter.
They say I'm, um, I'm, uh, thethe.
This guy says I'm violatingthis trademark.
What do I do?
What's going on here?
Taylor Barlow (11:11):
Yeah, anybody in the food and beverage industry
will get one of these at somepoint, from Monster, for example
.
Monster is the number onetrademark bully in the country,
if not internationally trademarkbully in the country, if not
internationally.
They have anywhere from 70 to150 oppositions going at any one
(11:36):
time.
So, yeah, you get these all thetime.
Now what you do in responsedepends heavily on the content
of the letter, right?
A cease and desist letter, justlike any demand letter, saying
you can't use the word monsterin your toothpaste because we
(12:12):
own monster and we make energydrinks.
Well, I mean, there's not a lotof similarity there, and so my
advice to that that client wouldbe different than somebody who
is making an energy drink andusing the word monster to
(12:32):
compete.
So how you respond to a ceaseand desist letter in the
trademark realm depends on theycall them the DuPont factors.
There are 13 different factorsof how you assess similarities
between two different trademarks, but they fall into roughly
three categories, right?
(12:53):
How similar are the marksthemselves?
How similar are the goods andservices being offered under
that mark and how similar arethe trade channels?
How you know, are these twocompanies 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 toiletrydepartment?
(13:13):
And so you assess those threefactors 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, forexample, again, it doesn't
matter how similar you arethey're going to bury you in
legal fees because they want toassert their dominance in every
(13:36):
category, whether or not theyhave the right to do that.
So, uh, they they're.
It's almost become part oftheir brand at this point.
Right, they will.
Right they will.
They will bankruptentrepreneurs, even if they
don't really have a claim to dothat so your advice could be is
(14:12):
different.
Robert Sewell (14:13):
You know your.
I don't know if you really areviolating the mark and you could
proceed.
However, just know that they'llbury you in legal fees.
Taylor Barlow (14:26):
Yeah, you'd probably win that case, but
you'd have to spend $100,000 towin it and is that worth it to
you?
That doesn't seem fair.
No, it's absolutely not fairand the trademark office
recognizes this.
So does the federal circuit,but for some reason, monster has
(14:49):
been allowed to continue thatbehavior.
Um, they uh.
There was a case I was justreading about uh again involving
monster.
I think they're one of the.
The most interesting companywas um in the in the uh in the
(15:10):
UK again, but they were usingthe word beast in their uh in
their beverage company.
Now monster also owns uh,unleash the beast.
Okay, that's uh one of one oftheir other trademarks, and they
fought this guy for years andhe was a small startup
(15:37):
entrepreneur but he felt like hewanted to defend it.
He felt like he had rights tothat mark and he shouldn't have
to close shop just becauseMonster says so.
So he fought it for a couple ofyears and ended up winning.
But in the UK and in mosttrademark cases, frankly, you
don't get your attorney's feesif you're on the defense or you
(16:02):
can get disgorgement of profitsif you're a plaintiff, but for
the defendant you don't get yourattorney's fees.
You can get disgorgement ofprofits if you're a plaintiff
but for the defendant you don'tget your attorney's fees.
And so he spent about 80,000pounds, uh, fighting this case
and he said that was.
I have to start over.
That was all my capital and I'messentially starting from
square one now because of theselegal fees, even though he won,
(16:22):
and monster knows that right.
So they keep doing this andthey keep winning or succeeding
rather than you know.
So they do keep doing it andit's a sad reality.
But you know, if I have aclient that gets a cease and
desist letter from Monster orsome other trademark bully Apple
is number two that my advicewould be, probably, if it's
(16:45):
cheaper for you to rebrand thanit is to fight this, it might be
better to rebrand.
But in another case, if, if youhave a smaller, you know a
local contractor or somethingthat is asserting those rights
against you and maybe their,maybe their name is, you know,
arizona contracting Okay, that'spretty generic.
(17:06):
You know, if they're trying toassert those rights against you,
sometimes my advice is throwthat letter in the garbage.
It's not even worth respondingto it because there's no way in
(17:30):
any court that they're going towin this if they even have the
funds to bring a claim in thefirst place.
Robert Sewell (17:33):
And if they do, then we'll address it at that
time, tell me about the caseSDCCU versus CEFCU.
It's a really important case, Iunderstand for understanding.
Taylor Barlow (17:48):
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 DiegoCounty credit union and the
other one is a Citizens Equity.
First Credit Union, theCitizens Equity came first.
(18:14):
Their trademark is Not a Bank,better, a little bit of a
tagline there the San DiegoCredit Union filed an
application for sorry, I mightget these backwards, the names
are a little bit similar, butanyway they have a trademark for
(18:35):
it's not big banking, it'sbetter.
Okay, you can see thesimilarities but they're not
exactly the same.
So one, I think it's CitizensEquity, I think Citizens equity
came second.
So they are trying to get atrademark for their not a bank,
better, the shorter one.
And San Diego comes to them andopposes their trademark in the
(19:01):
trademark office.
Akin to a cease and desistletter, right, but a little bit
more formalized.
Akin to a cease and desistletter, right, but a little bit
more formalized.
They file an action in theUSPTO to stop their application.
We aren't privy to all thecease and desist letters that
may have gone back and forthprior to this, but we know that
(19:22):
there was at least a dispute.
So what citizens' equity did inresponse to this opposition is
they took a proactive approach.
So, rather than sitting in thedefense and defending the
opposition and fighting it atthe USPTO, they proactively
(19:44):
filed what's called an actionfor declaratory judgment.
Basically, they filed an actionin federal court saying Judge,
come on, take a look at this andtell them that I'm not
infringing on their rights, sothey, as the recipient of a
cease and desist or as apotential defendant, you, rather
(20:07):
than sitting back and waitingto get sued, you can be
proactive and file an action toassert your rights and allow
your application to continueunfettered from potential
opposers.
And that's what happened hereand they ultimately won.
They sought declaratory relieffrom the judge and they won, and
(20:31):
then it went up on appeal andon some other issues they won,
and then it went up on appealand on some other issues.
But that is a good example, Ithink, of how you know if you
are, if you receive one of thesecease and desist letters or you
get a potential action from atrademark bully or some other
potential plaintiff and you havea strong case and you want to
(20:55):
do everything that you can todefend the rights in your
trademark or your potentialtrademark.
You can take a proactiveapproach, uh and assert those
rights in advance that'sinteresting.
Robert Sewell (21:08):
So so I get a trade, I get a cease and desist,
and I go to Taylor and I sayhey, Taylor, I got the cease and
desist.
Well, go ahead and file suit tofind out whether or not you're
wrong.
That's what you're saying.
Taylor Barlow (21:27):
Yeah, and you can , and that's a whoever's writing
.
The cease and desist has to becareful, because you want to
strike this balance betweenbeing too kind right, and being
too fluffy with your demands,and you know you don't want to
(21:48):
be too overly aggressive either.
If you're too overly aggressive, you may push the potential
(22:11):
defendant into filing their owndeclaratory judgment action, and
now you're the defendant and soyour cease and desist has.
Look how you're infringing, youknow, and you need to stop so
that there isn't a conflict heregoing forward.
And if you're too light andfluffy, you're not going to get
(22:31):
that outcome, and if you're toooverly aggressive, you're going
to force them to take actionagainst you, which you don't
want either.
Robert Sewell (22:38):
So I'll say you will stop using the color red in
the word whatever, Otherwisewe're going to sue you, Right?
(23:02):
Is that what you're trying tosay?
Taylor Barlow (23:03):
Don't do that Just say, we've established a
trademark of X and we use thecolor pink.
Yeah, what you really want toshow is I mean, I mentioned the
DuPont factors you want to showthat, look, the marks are
confusingly similar, the goodsand services are similar, you
operate in the same tradechannels.
And if you can show that yourcustomers or potential customers
have been actually confused,right, if you're getting reviews
(23:30):
on your business website thatare meant for the other party,
or vice versa.
Or if you're getting customerscalling in or coming into your
place of business and they'relooking for the other, or again
vice versa, those instances ofactual confusion are incredible
evidence and will go a long wayin a cease and desist letter.
They'll go a long way in courtif it gets to that point, but in
(23:52):
a cease and desist letter, ifyou can show that there's these
instances of actual confusion,it will help make your case to
the potential infringer.
Robert Sewell (24:04):
Interesting.
And is there ever a middleground?
I mean, it seems like you juststop infringing or you don't
stop infringing.
Taylor Barlow (24:13):
Yeah, yeah, I mean, it depends on the business
, right?
If, if I had a client who whooffered you know one of those IV
drip services where you go intothe med spa or whatever and you
you get hooked up to this bagand you get vitamins and
electrolytes and things straightto your blood, and they had a
(24:40):
trademark and it was federallyregistered and they wanted to
shut down every other companythat used a similar name in that
narrow scope of goods andservices.
Right, we couldn't assert thoserights against every med spa,
(25:00):
we couldn't assert those rightsagainst every you know vitamin
supplement store.
But if you're offering IV orintramuscular hydration under a
similar name, then that's who wewould assert those rights
against.
So what we would do is eitherget those people to change their
(25:21):
name a little bit or stopoffering that particular scope
of services.
So, yeah, we would find a wayto compromise and if that
potential existed, that's in thebest, that's for everybody's
benefit.
Robert Sewell (25:41):
So we have national trademark laws and
state trademark laws, but wecould also look at how to
enforce an international law,and there's treaties that we
have for enforcing internationaltrademarks, so it's a
(26:05):
fascinating subject.
Taylor Barlow (26:08):
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 recognizeeach other's trademarks and
enforce them similarly.
Robert Sewell (26:25):
Interesting.
So if you're a business, youwant to have a catchphrase.
You want to have a catchphrase.
You want to make yourselfunique in the market.
Do I just start using mycatchphrase?
Do I hire an attorney to findwhether or not I'm going to be
(26:48):
violating the trademark?
Taylor Barlow (26:53):
What do I do?
Yeah, it's always the question.
It depends on how much you'regoing to be investing in
marketing for that phrase orthat trademark or that logo,
whatever it is.
If you're going to be investingsignificant sums of money and
(27:13):
you're doing a nationwidemarketing campaign or something
like that, I would alwaysrecommend to do some due
diligence up front.
If you're a mom and poprestaurant and you have a
tagline on your menu, then yeah,you can put the little TM
signifier on your catchphraseand just start using it, knowing
(27:37):
that, look, probably at worstyou're going to get a cease and
desist letter and then you cantake it down at that time.
But if you're creating asignificant marketing campaign
and generating lots of revenueunder this brand, know that a
(28:03):
potential opposer could come inand sue you for disgorgement of
profits and anything that you'veearned.
That should have gone to them,right?
If you're trading on somebodyelse's mark or somebody else's
brand and people are confusingthe two of you and that's
business that should have goneto them, they may sue you for
that business.
That again should have gone tothem.
But yeah, it's a sliding scale.
If you're a local shop andyou're just using it as a fun
(28:28):
tagline on your menus.
Don't invest more into legalfees than you need to.
If you're doing a nationwidecampaign, do some due diligence.
Robert Sewell (28:40):
So, taylor, I want to conclude with where we
began.
We talked about Marvel.
Marvel let superheroes enterthe public domain, and what that
meant was it no longer wastheir mark.
Is that a real concern forpeople?
Taylor Barlow (29:04):
Yes, there have been companies that take an
active campaign to avoid theirmarks becoming generic.
There's a funny video onYouTube.
You guys can look it up ifyou're listening.
But listen to or look upVelcro's generic trademark video
(29:27):
.
They have a whole song anddance about reminding people
what Velcro really is.
And Velcro is a brand for theproduct known as hook and loop,
a hook and loop fastener.
The problem is hook and loopfastener doesn't really roll off
the tongue like Velcro does.
Robert Sewell (29:46):
Yeah right.
Taylor Barlow (29:47):
There's a variety of these brands that have now
become generic, because incommon parlance it's just, they
become ubiquitous, or the namesare easier to say.
You know chapstick for lip balmor scotch tape for I don't even
know what else.
You would call it um kleenexfor tissue paper kleenex for
tissues.
(30:08):
Uh, you know all these.
Uh, one one I think that hasbeen successful in their
anti-genericide campaign isxerox.
Robert Sewell (30:17):
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 (30:32):
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 othercompetitors in the field, maybe
because Xerox is more annoyingto say than making copies, I'm
not sure.
But it's interesting to seewhich companies are successful
in that campaign and which onesare not.
Robert Sewell (30:53):
Okay, taylor, companies are successful in that
campaign and others, and whichones are not.
Okay, taylor, as you know,attorneys have a unique smell
and we could trademark a smell.
We know that they smell alittle bit like rotten fish and
athletic socks, so will you helpme gain that trademark?
Taylor Barlow (31:16):
You know what, if every lawyer in your firm has
that same distinct smell andyour clients come to recognize
that, absolutely let's do it.
Robert Sewell (31:24):
Okay, let's do it .
If I needed to get a hold ofyou, how can I do that?
If I need a trademark advice?
Taylor Barlow (31:30):
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 inDavis Miles here in Arizona.
You can reach me at the office.
It's 480-733-6800.
And we'll talk about anytrademark issues that you might
have, Taylor thanks for comingon.
Robert Sewell (31:44):
Thanks, Bob.
Thanks for listening to thepodcast Is that Even Legal is
now listened to in 100 countriesand available on virtually all
podcast platforms.
Countries and available onvirtually all podcast platforms.
Leave us a review, send us someshow ideas and do so at
producer at even legalcom.
Don't forget, as smart as wesound and as lovable as we are,
(32:05):
we are not your lawyers and weare not giving you legal advice.
But if you need some legaladvice, get some.
There are some great lawyersout there and we are always
ready to help.
See you next time.
Is that even legal?
It's a question we askourselves on a daily basis.
We ask it about our neighbors,we ask it about our elected
officials, we ask it about ourfamily and sometimes we ask it
to ourselves.
The law is complex and itimpacts everyone all the time,
and that's why we are here.
I'm attorney Bob Sewell andthis is season five of the
(00:26):
Worldwide Podcast that exploresthat one burning question.
Is that even legal?
Let's go.
Today's guest on the show isTaylor Barlow.
Taylor Barlow is an attorney atDavis Miles.
He's a fantastic litigator andhe has an emphasis in trademark
(00:46):
and so I thought I'd have you onthe show to talk about it,
taylor.
Welcome to the show.
Thanks, bob, happy to be here.
So what made me want to haveyou on was a recent case that
came up and involved DC andMarvel, and what happened was
there's a company and thecompany was using the term as an
(01:09):
entertainment company, usingthe 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 stronglyover the years.
And here we have this challengeand DC and Marvel said, yeah,
(01:35):
we're not going to challengethat mark, and they lost their
mark for superheroes.
Did you hear?
Taylor Barlow (01:43):
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 thesource of a good or service
right.
It's to identify to theconsumer who's producing this
product or service right.
Dc and Marvel, famouslycompetitors.
(02:05):
They're not the same company.
Dc is owned by Warner Brothers,Discovery and Marvel is owned
by Disney, yet they share therights in this trademark
superhero.
So it doesn't identify thesource of any goods.
It identifies two sources ofthe same service, which is
(02:26):
strange to begin with.
But yeah, you know, I'm notsurprised that somebody finally
came in and contested it.
Robert Sewell (02:34):
Yeah, and I did find that odd too, that you know
usually, when you have atrademark, 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 twocompanies who honed in on the
same term and said no, no, no,no, we are the superheroes
(02:55):
together and it's entered thepublic domain enough that they
decided that it's no longer atrademark.
Let's talk about it.
Taylor Barlow (03:07):
In the trademark world you call that genericide.
The trademark dies because ithas become generic.
Robert Sewell (03:16):
What is a trademark?
Taylor Barlow (03:19):
Yeah, I mentioned at the top, it's a source
identifier.
It can be really any number ofthings.
It can be typically a logo or aname or phrase or word, but it
can be other things.
It can be even a smell, atexture, it can be a color,
(03:41):
anything that is used by a brandor a company to identify
themselves as the source of thatproduct or service.
You know, you see, I mean wementioned Marvel and DC, right?
You see the DC logo and youknow that those comic books or
that movie is produced by the DCproduction company.
Robert Sewell (04:09):
So one of the things I find fascinating is
that you could trademark justabout anything.
Taylor Barlow (04:17):
Right, yeah, yeah .
As long as it's used toidentify a source, it can be a
trademark.
Robert Sewell (04:24):
But I could trademark a smell.
Taylor Barlow (04:28):
That one is complicated.
So you can trademark a smell aslong as the smell isn't the
whole purpose of the thing,right?
So you can't trademark thesmell of a cologne, because the
whole purpose of a cologne is tosmell nice.
But you can trademark the smellof play-doh, and and they have,
hasbro did uh, they trademarkthe smell of play-doh because
(04:51):
when you open that plasticcontainer you get the same exact
smell every time and you canreadily identify that as
authentic play-doh that'samazing, I get.
Robert Sewell (05:03):
What about a sound?
Can I trademark a sound?
Taylor Barlow (05:06):
yeah, and again back to the world of
entertainment.
It happens all the time.
I mean, uh, thx, you hear thatat the start of of the movie
trailers, the, the slowcrescendo, or dolby audio is
another one.
You, you hear these, uh, thesesounds that readily identify
their production companies.
(05:27):
So, or nbc, nbc, right, youknow those sounds it's a yeah,
and but why?
Robert Sewell (05:37):
why would they choose to trademark those sounds
rather than something else?
Don Couldn't they copyright it,or is that something?
Taylor Barlow (05:46):
different.
They can and a lot of timesthey do.
Sometimes the sounds are tooshort.
You can't take a three-noteprogression and copyright that
and remove it from the publicdomain for other artists to use
in their own compositions.
But you can use it as atrademark because as a
(06:10):
standalone they can readilyidentify those companies.
Robert Sewell (06:17):
But could I trademark something like my name
, I mean, if I became superfamous?
I mean mean, I am famous in myown mind, but if I became really
famous like taylor swift.
Could I trademark taylor?
Taylor Barlow (06:33):
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 thinkof 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 wassomebody's name and he used it
(06:58):
to identify his, his cars and,and over time you know, it
becomes associated as a, as abrand name.
But yeah, as long as, as longas it is used to identify a
source, or identify the sourceof of any good or service, you
can do that.
Robert Sewell (07:18):
There were.
There was a famous trademarkcase in the UK where this is
decades ago and I'm going off mymemory here, but there's a
famous trademark case in the UKwhere a man named McDonald
wanted to have a restaurant thathe named after himself
(07:40):
McDonald's, mcdonald's andMcDonald's said no way, but in
the UK it worked out that they,the the guy, got to keep the
name of his restaurant mainlybecause it was his name.
Taylor Barlow (07:52):
It was his McDonald's restaurant yeah,
there is some some exceptions.
I don't know that that wouldfly in the US, because
McDonald's has become what theycall a famous mark.
Once you're so ubiquitous andfamous, you get some additional
rights.
But there are some exceptionsfor names.
If it's your name and it's yourcompany, you are the source.
(08:17):
They generally give you somemore leeway and exceptions to
use your name as that brandleeway and exceptions to use
your name as that brand, myesteemed producer, Paul Ward.
Robert Sewell (08:31):
he wants me to trademark my hair like Conan
O'Brien.
Taylor Barlow (08:39):
Should I do that?
Can I do that?
You could?
I mean, as long as it's atrademark hair, if you have some
sort of distinct style andyou're using it in your logo,
you know, just like.
Conan's hair itself isn't thetrademark, it's the use of it in
the show's logo.
Robert Sewell (09:00):
Yeah, but it was so ubiquitous to Conan right.
Yeah, but it was so ubiquitousto Conan right that giant sweep
over and he put it up into hismark.
Taylor Barlow (09:14):
Yeah other people probably could do the same.
Robert Sewell (09:17):
You know, mr T probably could do it, hulk Hogan
could probably do his mustacheor his bandana, yeah his lack of
hair there's people that coulddo it so okay, if I got a
trademark and I want to protectit, what am I gonna do?
Taylor Barlow (09:43):
So the interesting thing about
trademark rights is you get themjust by using them.
You don't have to do anythingformal to have trademark rights
in the stuff that you're alreadyusing in commerce.
If you have a business and youhave a name and you're selling
burgers under that name, youhave trademark rights at common
(10:04):
law.
You have trademark rights atcommon law, right that common
law meaning the law recognizesit without any sort of formal
application or registration.
But to have those rightsnationally and to provide notice
to the public nationally youhave to go through a federal
registration and applicationprocess through the USPTO, the
(10:25):
United States Patent andTrademark Office.
You submit your application,you show proof that you are
using it in commerce and youwait a year, a year and a half,
for the trademark office toreview it and give their stamp
of approval and issue yourfederal registration so I,
(10:52):
you're.
Robert Sewell (10:52):
Once in a while, you, you as an attorney.
Your client comes in and says Ijust got this cease and desist
letter.
They say I'm, um, I'm, uh, thethe.
This guy says I'm violatingthis trademark.
What do I do?
What's going on here?
Taylor Barlow (11:11):
Yeah, anybody in the food and beverage industry
will get one of these at somepoint, from Monster, for example
.
Monster is the number onetrademark bully in the country,
if not internationally trademarkbully in the country, if not
internationally.
They have anywhere from 70 to150 oppositions going at any one
(11:36):
time.
So, yeah, you get these all thetime.
Now what you do in responsedepends heavily on the content
of the letter, right?
A cease and desist letter, justlike any demand letter, saying
you can't use the word monsterin your toothpaste because we
(12:12):
own monster and we make energydrinks.
Well, I mean, there's not a lotof similarity there, and so my
advice to that that client wouldbe different than somebody who
is making an energy drink andusing the word monster to
(12:32):
compete.
So how you respond to a ceaseand desist letter in the
trademark realm depends on theycall them the DuPont factors.
There are 13 different factorsof how you assess similarities
between two different trademarks, but they fall into roughly
three categories, right?
(12:53):
How similar are the marksthemselves?
How similar are the goods andservices being offered under
that mark and how similar arethe trade channels?
How you know, are these twocompanies 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 toiletrydepartment?
(13:13):
And so you assess those threefactors 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, forexample, again, it doesn't
matter how similar you arethey're going to bury you in
legal fees because they want toassert their dominance in every
(13:36):
category, whether or not theyhave the right to do that.
So, uh, they they're.
It's almost become part oftheir brand at this point.
Right, they will.
Right they will.
They will bankruptentrepreneurs, even if they
don't really have a claim to dothat so your advice could be is
(14:12):
different.
Robert Sewell (14:13):
You know your.
I don't know if you really areviolating the mark and you could
proceed.
However, just know that they'llbury you in legal fees.
Taylor Barlow (14:26):
Yeah, you'd probably win that case, but
you'd have to spend $100,000 towin it and is that worth it to
you?
That doesn't seem fair.
No, it's absolutely not fairand the trademark office
recognizes this.
So does the federal circuit,but for some reason, monster has
(14:49):
been allowed to continue thatbehavior.
Um, they uh.
There was a case I was justreading about uh again involving
monster.
I think they're one of the.
The most interesting companywas um in the in the uh in the
(15:10):
UK again, but they were usingthe word beast in their uh in
their beverage company.
Now monster also owns uh,unleash the beast.
Okay, that's uh one of one oftheir other trademarks, and they
fought this guy for years andhe was a small startup
(15:37):
entrepreneur but he felt like hewanted to defend it.
He felt like he had rights tothat mark and he shouldn't have
to close shop just becauseMonster says so.
So he fought it for a couple ofyears and ended up winning.
But in the UK and in mosttrademark cases, frankly, you
don't get your attorney's feesif you're on the defense or you
(16:02):
can get disgorgement of profitsif you're a plaintiff, but for
the defendant you don't get yourattorney's fees.
You can get disgorgement ofprofits if you're a plaintiff
but for the defendant you don'tget your attorney's fees.
And so he spent about 80,000pounds, uh, fighting this case
and he said that was.
I have to start over.
That was all my capital and I'messentially starting from
square one now because of theselegal fees, even though he won,
(16:22):
and monster knows that right.
So they keep doing this andthey keep winning or succeeding
rather than you know.
So they do keep doing it andit's a sad reality.
But you know, if I have aclient that gets a cease and
desist letter from Monster orsome other trademark bully Apple
is number two that my advicewould be, probably, if it's
(16:45):
cheaper for you to rebrand thanit is to fight this, it might be
better to rebrand.
But in another case, if, if youhave a smaller, you know a
local contractor or somethingthat is asserting those rights
against you and maybe their,maybe their name is, you know,
arizona contracting Okay, that'spretty generic.
(17:06):
You know, if they're trying toassert those rights against you,
sometimes my advice is throwthat letter in the garbage.
It's not even worth respondingto it because there's no way in
(17:30):
any court that they're going towin this if they even have the
funds to bring a claim in thefirst place.
Robert Sewell (17:33):
And if they do, then we'll address it at that
time, tell me about the caseSDCCU versus CEFCU.
It's a really important case, Iunderstand for understanding.
Taylor Barlow (17:48):
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 DiegoCounty credit union and the
other one is a Citizens Equity.
First Credit Union, theCitizens Equity came first.
(18:14):
Their trademark is Not a Bank,better, a little bit of a
tagline there the San DiegoCredit Union filed an
application for sorry, I mightget these backwards, the names
are a little bit similar, butanyway they have a trademark for
(18:35):
it's not big banking, it'sbetter.
Okay, you can see thesimilarities but they're not
exactly the same.
So one, I think it's CitizensEquity, I think Citizens equity
came second.
So they are trying to get atrademark for their not a bank,
better, the shorter one.
And San Diego comes to them andopposes their trademark in the
(19:01):
trademark office.
Akin to a cease and desistletter, right, but a little bit
more formalized.
Akin to a cease and desistletter, right, but a little bit
more formalized.
They file an action in theUSPTO to stop their application.
We aren't privy to all thecease and desist letters that
may have gone back and forthprior to this, but we know that
(19:22):
there was at least a dispute.
So what citizens' equity did inresponse to this opposition is
they took a proactive approach.
So, rather than sitting in thedefense and defending the
opposition and fighting it atthe USPTO, they proactively
(19:44):
filed what's called an actionfor declaratory judgment.
Basically, they filed an actionin federal court saying Judge,
come on, take a look at this andtell them that I'm not
infringing on their rights, sothey, as the recipient of a
cease and desist or as apotential defendant, you, rather
(20:07):
than sitting back and waitingto get sued, you can be
proactive and file an action toassert your rights and allow
your application to continueunfettered from potential
opposers.
And that's what happened hereand they ultimately won.
They sought declaratory relieffrom the judge and they won, and
(20:31):
then it went up on appeal andon some other issues they won,
and then it went up on appealand on some other issues.
But that is a good example, Ithink, of how you know if you
are, if you receive one of thesecease and desist letters or you
get a potential action from atrademark bully or some other
potential plaintiff and you havea strong case and you want to
(20:55):
do everything that you can todefend the rights in your
trademark or your potentialtrademark.
You can take a proactiveapproach, uh and assert those
rights in advance that'sinteresting.
Robert Sewell (21:08):
So so I get a trade, I get a cease and desist,
and I go to Taylor and I sayhey, Taylor, I got the cease and
desist.
Well, go ahead and file suit tofind out whether or not you're
wrong.
That's what you're saying.
Taylor Barlow (21:27):
Yeah, and you can , and that's a whoever's writing
.
The cease and desist has to becareful, because you want to
strike this balance betweenbeing too kind right, and being
too fluffy with your demands,and you know you don't want to
(21:48):
be too overly aggressive either.
If you're too overly aggressive, you may push the potential
(22:11):
defendant into filing their owndeclaratory judgment action, and
now you're the defendant and soyour cease and desist has.
Look how you're infringing, youknow, and you need to stop so
that there isn't a conflict heregoing forward.
And if you're too light andfluffy, you're not going to get
(22:31):
that outcome, and if you're toooverly aggressive, you're going
to force them to take actionagainst you, which you don't
want either.
Robert Sewell (22:38):
So I'll say you will stop using the color red in
the word whatever, Otherwisewe're going to sue you, Right?
(23:02):
Is that what you're trying tosay?
Taylor Barlow (23:03):
Don't do that Just say, we've established a
trademark of X and we use thecolor pink.
Yeah, what you really want toshow is I mean, I mentioned the
DuPont factors you want to showthat, look, the marks are
confusingly similar, the goodsand services are similar, you
operate in the same tradechannels.
And if you can show that yourcustomers or potential customers
have been actually confused,right, if you're getting reviews
(23:30):
on your business website thatare meant for the other party,
or vice versa.
Or if you're getting customerscalling in or coming into your
place of business and they'relooking for the other, or again
vice versa, those instances ofactual confusion are incredible
evidence and will go a long wayin a cease and desist letter.
They'll go a long way in courtif it gets to that point, but in
(23:52):
a cease and desist letter, ifyou can show that there's these
instances of actual confusion,it will help make your case to
the potential infringer.
Robert Sewell (24:04):
Interesting.
And is there ever a middleground?
I mean, it seems like you juststop infringing or you don't
stop infringing.
Taylor Barlow (24:13):
Yeah, yeah, I mean, it depends on the business
, right?
If, if I had a client who whooffered you know one of those IV
drip services where you go intothe med spa or whatever and you
you get hooked up to this bagand you get vitamins and
electrolytes and things straightto your blood, and they had a
(24:40):
trademark and it was federallyregistered and they wanted to
shut down every other companythat used a similar name in that
narrow scope of goods andservices.
Right, we couldn't assert thoserights against every med spa,
(25:00):
we couldn't assert those rightsagainst every you know vitamin
supplement store.
But if you're offering IV orintramuscular hydration under a
similar name, then that's who wewould assert those rights
against.
So what we would do is eitherget those people to change their
(25:21):
name a little bit or stopoffering that particular scope
of services.
So, yeah, we would find a wayto compromise and if that
potential existed, that's in thebest, that's for everybody's
benefit.
Robert Sewell (25:41):
So we have national trademark laws and
state trademark laws, but wecould also look at how to
enforce an international law,and there's treaties that we
have for enforcing internationaltrademarks, so it's a
(26:05):
fascinating subject.
Taylor Barlow (26:08):
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 recognizeeach other's trademarks and
enforce them similarly.
Robert Sewell (26:25):
Interesting.
So if you're a business, youwant to have a catchphrase.
You want to have a catchphrase.
You want to make yourselfunique in the market.
Do I just start using mycatchphrase?
Do I hire an attorney to findwhether or not I'm going to be
(26:48):
violating the trademark?
Taylor Barlow (26:53):
What do I do?
Yeah, it's always the question.
It depends on how much you'regoing to be investing in
marketing for that phrase orthat trademark or that logo,
whatever it is.
If you're going to be investingsignificant sums of money and
(27:13):
you're doing a nationwidemarketing campaign or something
like that, I would alwaysrecommend to do some due
diligence up front.
If you're a mom and poprestaurant and you have a
tagline on your menu, then yeah,you can put the little TM
signifier on your catchphraseand just start using it, knowing
(27:37):
that, look, probably at worstyou're going to get a cease and
desist letter and then you cantake it down at that time.
But if you're creating asignificant marketing campaign
and generating lots of revenueunder this brand, know that a
(28:03):
potential opposer could come inand sue you for disgorgement of
profits and anything that you'veearned.
That should have gone to them,right?
If you're trading on somebodyelse's mark or somebody else's
brand and people are confusingthe two of you and that's
business that should have goneto them, they may sue you for
that business.
That again should have gone tothem.
But yeah, it's a sliding scale.
If you're a local shop andyou're just using it as a fun
(28:28):
tagline on your menus.
Don't invest more into legalfees than you need to.
If you're doing a nationwidecampaign, do some due diligence.
Robert Sewell (28:40):
So, taylor, I want to conclude with where we
began.
We talked about Marvel.
Marvel let superheroes enterthe public domain, and what that
meant was it no longer wastheir mark.
Is that a real concern forpeople?
Taylor Barlow (29:04):
Yes, there have been companies that take an
active campaign to avoid theirmarks becoming generic.
There's a funny video onYouTube.
You guys can look it up ifyou're listening.
But listen to or look upVelcro's generic trademark video
(29:27):
.
They have a whole song anddance about reminding people
what Velcro really is.
And Velcro is a brand for theproduct known as hook and loop,
a hook and loop fastener.
The problem is hook and loopfastener doesn't really roll off
the tongue like Velcro does.
Robert Sewell (29:46):
Yeah right.
Taylor Barlow (29:47):
There's a variety of these brands that have now
become generic, because incommon parlance it's just, they
become ubiquitous, or the namesare easier to say.
You know chapstick for lip balmor scotch tape for I don't even
know what else.
You would call it um kleenexfor tissue paper kleenex for
tissues.
(30:08):
Uh, you know all these.
Uh, one one I think that hasbeen successful in their
anti-genericide campaign isxerox.
Robert Sewell (30:17):
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 (30:32):
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 othercompetitors in the field, maybe
because Xerox is more annoyingto say than making copies, I'm
not sure.
But it's interesting to seewhich companies are successful
in that campaign and which onesare not.
Robert Sewell (30:53):
Okay, taylor, companies are successful in that
campaign and others, and whichones are not.
Okay, taylor, as you know,attorneys have a unique smell
and we could trademark a smell.
We know that they smell alittle bit like rotten fish and
athletic socks, so will you helpme gain that trademark?
Taylor Barlow (31:16):
You know what, if every lawyer in your firm has
that same distinct smell andyour clients come to recognize
that, absolutely let's do it.
Robert Sewell (31:24):
Okay, let's do it .
If I needed to get a hold ofyou, how can I do that?
If I need a trademark advice?
Taylor Barlow (31:30):
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 inDavis Miles here in Arizona.
You can reach me at the office.
It's 480-733-6800.
And we'll talk about anytrademark issues that you might
have, Taylor thanks for comingon.
Robert Sewell (31:44):
Thanks, Bob.
Thanks for listening to thepodcast Is that Even Legal is
now listened to in 100 countriesand available on virtually all
podcast platforms.
Countries and available onvirtually all podcast platforms.
Leave us a review, send us someshow ideas and do so at
producer at even legalcom.
Don't forget, as smart as wesound and as lovable as we are,
(32:05):
we are not your lawyers and weare not giving you legal advice.
But if you need some legaladvice, get some.
There are some great lawyersout there and we are always
ready to help.
See you next time.
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