Wednesday, December 11, 2013

Considering getting a trademark? "Think" again…it may not matter if you thought about it first

Can you imagine being told that you cannot file a trademark just because another group has become more popularly associated with the name you want to trademark?

Imagine you are the owner of a record label and one of your artists is a local popular group named Sacred. After nine years of association under the group name, the group separates. All of a sudden, a different group breaks on the screen and becomes a popular sensation, but they are also named Sacred.  

At this point, you try to trademark the name of your former group, but the other group tries to get the name trademarked as well.

How will it be determined as to whom the owner of the group name legally belongs to? Well, courts seem like they are directing their reasoning objectively regarding this issue. Interestingly, unlike tangible intellectual properties like copyrights and patents, you cannot actually touch a trademark. Therefore, who is to say that a word, name, or phrase, is actually yours? How can a person prove that he or she is the owner of an intangible trademark that is in a sense, just a thought or idea?

A recent court decision has ruled that the in the event where more than one person tries to trademark the same name, the owner will be determined objectively. Meaning, whomever the public believes to be the owner will be deemed the owner.

For example, if you, as the owner of the record label owner from above, wanted to claim legal ownership of the group name Sacred, the public must know you to be more associated with the name Sacred, for both its use and name, more so than the new sensational group. 

This may seem unfair to someone like the record label owner who had formerly used the name Sacred first, but, this is the way that courts are deciding these issues.

However, I think it is unfair to the extent that whoever used the name first should have the legal ownership of the name. But, that too, causes a problem if that is allowed. I see two perspectives for the reasons why problems might arise: Either the law should consider (1) If more than one person files for a trademark, allow the person who was first associated with the trademark to become the legal owner or (2) Protect the person who is more popularly associated with the name in order to prevent others from using the same name just to profit from it based off of another’s use of its popularity.

Perspective #2 is the reasoning for why the law seems to favor the objective approach for determining who a trademark owner will be. So long as it seems fair to the public is what seems fair to legislature when making these laws.

I think that both views stir up problems within trademark law. Is it more important to honor a person’s idea by allowing perspective #1 to outweigh perspective # 2 or is it more important to prevent people from using the name of a popular associated term, word, or phrase, just because they want to make a profit from the popular term, word, or phrase? 

I think this is just a difficult call to make...
















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