DON'T BOGART THAT JOINTLY OWNED TRADEMARK!

Recently, in an opinion published on 11.21.06, the Calif. Court of Appeal, Second App. District ruled on a case concerning the propriety of joint ownership of a trademark (Iskenderian v. Iskenderian, Case No. B183419; 2006 DJDAR 15202). The mark at issue was a Calif. restaurant service mark, ZANKOU CHICKEN. The Appellate Court affirmatively ruled that the law does not prohibit joint ownership of a trademark. In so ruling, this state court referred to federal law on point, e.g., 15 U.S.C. Sec. 1052(d), which permits concurrent registrations of marks under certain circumstances. Additionally, the court cited Prof. Thomas McCarthy, for the proposition that joint ownership of trademarks is possible. In this regard, the court referred to McCarthy's approach as to the propriety of the joint ownership of a trademark as requiring a balancing of two policies, namely:

1) "the protection of customers, which 'requires that fragmented, multiple ownership of marks be avoided and prohibited where likelihood of confusion exists,' and

2) the contractual expectation policy, which requires that when parties create a contractual framework of joint ownership, 'their legitimate expectations should be honored." (2 McCarthy on Trademarks and Unfair Competition (4th ed., 1992), Sec. 16:40, p. 16-64.3).

In this case, the court ruled that "the policy of honoring the legitimate expectations of multiple family members owning the trademark would clearly outweigh any risk of customer confusion, as all members of the family 'have a strong interest in protecting the validity and integrity' of the Zankou Chicken mark, and 'presumably would not engage in activity detrimental to' their rights in the mark."

A contrary finding is cited in a footnote in this same opinion, namely, Durango Herald, Inc. v. Riddle (D. Colo. 1988) 719 F. Supp. 941, wherein "the district court enjoined both parties to a joint venture from further use of the joint venture's trademark after expiration of the joint venture. The parties could not agree on the expansion or extension of their joint venture agreement, and both rejected cross-offers to buy out their partnership interests in the venture." In the end, the district court in Durango ruled that the particular circumstances in that case required the 'extinguishment' of the mark.

In conclusion, the findings of the Zankou and Durango opinions seems to make clear that the joint ownership of a trademark and its enforceability will depend upon whether or not the joint owners can get along and share in the benefits and burdens of trademark ownership. Therefore, joint trademark owners should avoid selfish and self serving use of the mark to the exclusion of the other owners which can lead to the type of prohibited fragmented ownership of marks which can cause likelihood of confusion. In other words, "Don't Bogart that Trademark !"

HEROES EVERYWHERE ! PROTECT WHAT’S YOURS !

As discussed last week, perhaps the Biggest breakout tv drama this season is HEROES. Thus, it is no surprise that on the cover of this week’s (Nov. 10, 2006) issue of Entertainment Weekly are three of the characters/actors from the tv series HEROES. So now that it is a true blue success story, what are the tv executives and company attorneys doing about protecting this property and what have they most likely done already.

Two of the obvious intellectual property doctrines that are applicable to protecting this property are copyright and trademark. For starters, copyright protects the content of the show, including the content of the Heroes website, the artwork, and the interactive graphic novel.

Trademark law would protect the title of the tv series, as well as any ancillary merchandising. For instance, any apparel, hats, costumes, toys, games, action figures, comic books, posters, trading cards, video games, etc. can be protected under U.S. trademark law as set forth in the Lanham Act. A primer of this very topic is available online at our office website at:

http://www.trademarkesq.com/pages/article2.html

This above-referenced article suggests an approach to “Protecting What’s Yours!”. We also hope that you will be as successful as Heroes with respect to your creative endeavors and that you will engage the full benefits provided by copyright and trademark principles so that you too can Protect What’s Yours !

Thanks for visiting TrademarkEsq !

Best wishes,

William E. Maguire
http://www.TrademarkEsq.com

*** Postscript; Dec. 14, 2006: Even Wikipedia and its legions of contributors have gotten into the act and created an entry for HEROES as follows:

http://en.wikipedia.org/wiki/Heroes_(TV_series)