Wednesday, December 20, 2006


San Francisco, Calif. A federal lawsuit was filed earlier this week on Dec. 18, 2006 on behalf of such legendary Rock 'n Roll musicians and bands as The Grateful Dead, Carlos Santana, Led Zeppelin, and The Doors. The named defendant is a commercial website called "Wolfgang's Vault" which sells rock 'n roll memorabilia. (Grateful Dead Productions v. Sagan).

The lawsuit alleges in part that the defendant is violating the musicians proprietary rights including the right of publicity, trademarks and copyrights. One of the issues is whether the defendant should be allowed to profit from sales of memorabilia (concert posters, vintage t-shirts, etc.) purchased from the Estate of Bill Graham, the legendary concert promoter who died in 1991. The plaintiff musicians allege that the memorabilia at issue was promotional in nature and never intended for sale and that Graham never had the right to sell, reproduce or otherwise exploit this memorabilia. With each side taking positions that are diametrically opposed, this legal tussle will likely focus on the memorabilia at issue and each items status as either official merchandise or promotional material. The role of trademark protection again rears its head in this case and reinforces the value of maximizing the legal protection measures available. For more on the subtleties of maximizing trademark protection, our article on "Rock 'n Roll Trademarks: Selection, Clearance & Registration", is available online at our website at:

In any event, it is hoped that this case will result in a decision which will clarify the treatment of such pop culture memorabilia, which the Baby Boomer generation covets so dearly, and which in some cases may indeed be subject to continuing rights as claimed by the musician's herein when the items were promotional in nature, rather than official merchandise, and/or never the prior subject matter of a proper transfer of title.

To be distinguished, of course, is previously sold official memorabilia, which can be sold and resold pursuant to the Copyright Act's "First Sale" doctrine. Thus, your previously purchased lp's, cd's, and t-shirts can be sold on ebay to your hearts delight, if you can dare part with them. Just don't be scanning those album covers and trying to make a profit by selling such reproductions.

Wednesday, December 13, 2006


Happy Holidays to you and yours from !

During this holiday season some very popular brands and/or trademarks seem to raise their profile and draw the interest of consumers. This blog entry today will mention just a few of these brands in terms of their commercial impression, including their internet presence, as well as their trademark significance. No doubt these comments may also conjure up fond memories for the reader-consumer.

For example:


Be sure to check out the following Wikipedia entries which are interesting:


Comment: Certainly a staple in California and craved all over the U.S. and beyond. Nuts & Chews are my favorite. Even seems to agree:

Trademark Highlight: Among numerous other registrations is the registration for
SEE'S CANDIES, Intl. Class #30 for 'candy'; Reg. No. 1518181.


Comment: This year's slogan at Mrs. Fields is "Taste the Joy of Giving !" I had the opportunity, interestingly, of tasting the joy of receiving, after having found myself the recipient of a big box of Mrs. Fields cookies ! WOW !!!!!

Trademark Highlight: Among many other U.S. Trademark Registrations is the registration for: MRS. FIELDS, Intl. Class #30 for 'bakery goods, namely cookies and brownies'; Reg. No. 1983184.



Comment: One of America's grandest winter resorts is Vail in Colorado with Beaver Creek also nearby.

On the Web:

Trademark Highlight: One U.S. Registration worthy of mention is the service mark for VAIL RESORTS, Class #35 for 'Management and operation of recreational facilities for others'; and Class #41 for 'Ski resort services; arranging competitions in the filed of ski racing, providing instruction in the field of skiing, etc.'; Reg. No. 2695373.


Comment: Or if you prefer, and with the early heavy snowfall they received, some people are making plans to travel to British Columbia in Canada to visit the Whistler Blackcomb ski resort.

On the Web:

Trademark Highlight: In addition to other registrations, the sample chosen here is for a trademark for apparel owned by the Resort entity, namely, Blackcomb Skiing Enterprises, a Limited Partnership composed of Intrawest Resort Corporation / Corporation de Villegiature Intrawest, a Canada corporation, collectively a LIMITED PARTNERSHIP of CANADA , for the mark, WHISTLER CANADA HIGHER GROUND, in Class #25 for 'Men's, women's and children's clothing, namely, shorts, blouses, tee-shirts, sweatshirts, ski jackets, snowboard jackets, track suits, jackets, golf shirts, vests and hats'; Reg. No. 2568781.

3. K2

Comment: K2 seems to have it all: skis, snowboards, helmets, goggles, apparel, etc. A friend of mine swears by his K2 Apache Recon shaped all mountain skis ! I'm partial to my Salomon XScreams, also a shaped all mountain pair of skis.

On the Web:

Trademark Highlight: Among many others, registered in the U.S. is the trademark, K2, in Intl. Class 28 for 'sports equipment namely, snow skis, ski poles, snowboards, snowboard bindings, in-line skates, knee pads, wrist pads and elbow pads, all for athletic use and protective gloves for skating'; Reg. No. 3096393.


Comment: One of the very first snowboards ever, if not the very first. There are competing claims on this topic. Whatever the case, Burton's apparel is top quality and its snowboards and boots are cutting edge and definitely favored by a huge fan/rider base. A friend of mine recently tried out next season's ('07/'08) gear at a private demo for dealers in Vail, Colorado. Mum's the word, however, on these next season offerings...

On the Web:

Trademark Highlight: Among numerous registrations is the trademark, BURTON SNOWBOARDS, in Intl. Class #28 for 'SNOWBOARDS - NAMELY, SINGLE SKIS IN THE NATURE OF SURFBOARDS TO BE USED IN SNOW'; Reg. No. 1362128.


The holidays are most importantly a time to enjoy the company of family and friends. In our society it is also nevertheless nearly impossible to not notice or purchase or enjoy the products and services exemplified by the above brands and/or trademarks.

These brands and the comments above also make it clear that brands and their corresponding trademark or service mark registrations are part and parcel to the success of the owners of said marks. This lesson of proprietary rights acquisition, maintenance and defense is certainly worth remembering and implementing by anyone doing business within our society's commercial landscape.

While I neglected to discuss Starbucks Eggnog Latte,

which belongs on any Top Ten List of Holiday Favorites, I will leave that to each of you to enjoy on your own time.

Wednesday, December 06, 2006


And so the box of cookies I received the other day via UPS Ground turned out to be an empty box with no MRS. FIELDS cookies inside. Amidst my disappointment, I then noticed that the box had been vandalized through the bottom of the box and then sloppily retaped during transit from Mrs. Fields to my office.

I was not really thinking of the registered trademark for MRS. FIELDS for bakery goods, namely cookies and brownies (U.S. Reg. No. 1983184; Reg. Date, July 2, 1996), nor its recipe, which is no doubt a closely guarded trade secret. I was thinking, rather, of the strength of this famous brand name and the fact that it is imprinted in large letters on the outside of the box, which was no doubt too tempting for the cookie thief. Or perhaps the thief is a sugar addict or chocoholic... This I do not know. I do know that this theft may, in fact, be a left-handed compliment or confirmation of the good will associated with the MRS. FIELDS brand and trademark. For instance, I do receive all the books, etc. that I order from, so what makes MRS. FIELDS different ? I guess the thief is not much of a reader. Or maybe I should have Amazon ship my Mrs. Fields cookies in an cardboard box.

As yet there is no happy ending but I did call customer service at Mrs. Fields and explained my dilemma of having received their box but no cookies thanks to a cookie thief. I did not mention that this might just be karma for the freshly baked cookies I used to sneak off the stove top many years ago when my little sister wasn't looking...... yet I had already paid the price for that since my sister, after learning of my clandestine operations, later started adding Tabasco sauce to certain 'bait cookies', having finally caught me in the act and using a spatula to swat my hand as I reached from the floor from what I thought was a good hiding spot.... Unfortunately, Mrs. Fields was not able to reship the cookies in a generic box that was not imprinted in large letters with their famous brand name. This was certainly not the first time a Mrs. Fields box of cookies had been felched and another shipping alternative was advised. The jury is as yet still out on this remedial effort.

***** Dec. 7, 2006 Update: Mrs. Fields Rocks ! Replacement Package arrived this afternoon via USPS Priority Mail...... which is either a tribute to the honesty of USPS employees or the threat of tampering with U.S. Mail and its penalties is simply too big a risk. In any case, Mrs. Fields has earned even more good will as far as I'm concerned. *****

Nevertheless, I have come to the conclusion that there was a silver, or chocolate chip, lining in this travesty, namely:

That there are powerful brands in our lives. In the case of MRS. FIELDS cookies, the good will and fame associated with this trademark and brand is not just due to advertising. The product itself is obviously popular because the cookies taste so good. In any event, these powerful brands need to be protected, and in the case of MRS. FIELDS, there are indeed numerous registrations which protect this brand as a trademark and which assist the trademark owner in defending its exclusivity to this mark. This in turn is a confirmation of the value of having a solid trademark registration program and a good trademark attorney. For any trademark owner who relies on its marks to generate business and to protect it's business investment, these are obvious conclusions which ought not be ignored.

Tuesday, November 28, 2006


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 !"

Monday, November 06, 2006


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:

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

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

Monday, October 30, 2006

TrademarkEsq: Trademarks • Copyrights • Licensing


“Save the Cheerleader. Save the World” is the current byline or slogan of the new hit NBC tv series about a group of interconnected superheroes from different parts of the world. This byline refers to a certain young high school cheerleader/superhero who is in particular peril at this stage of the series.

So why would a superhero need protection? Because there is hardly anything more intriguing than a damsel in distress. From an audience point of view this is captivating. And when a tv series becomes popular it too becomes the target of third party exploitation by counterfeiters and thieves.

So what is a tv network or tv series owner to do ? This, of course, is the domain of the intellectual property legal dept. or law firm i.p. attorney to discern and take measures to protect.

In our article first written and published in 1994, this scenario was addressed. Since updated, you can read the full text online at:

“PROTECT WHAT’S YOURS! ”That is the call to action that this premiere web log statement is recommending. Trademark law and copyright law are the principal legal doctrines applicable in this effort to protect what is yours. In the case of HEROES, you can bet that the title of the series, the content, the characters, the artwork, the blog and comic book series are being protected.

For more information on how you can protect what is yours, we invite you to check out our website and read our complimentary articles at no cost to you.

Welcome to TrademarkEsq ! We hope you leave with a plan of action to protect your creative works.

Best wishes,

William E. Maguire