To Trademark a Name, Or a Phrase
Mr. MICHAEL BUFFER (Sports Announcer): From the capital city of the United States of America, Washington, D.C., ladies and gentlemen, let's get ready to rumble.
ALISON STEWART, host:
Oh, you may recognize the deep, dulcet tones of ring announcer Michael Buffer, who describes that phrase on his Web site like this: "LGRTR is known as the clarion call to the pure integrity of the competitive spirit, promoting an adrenaline-boosting, positive, will-to-win attitude in the hearts and minds of fans of all ages," end-quote.
So much so that Buffer has trademarked the phrase. Yup, he owns it, let's get ready to rumble, much in the same way that basketball coach Pat Riley got the trademark for the phrase three-peat when the Lakers were headed for their third consecutive championship.
And more recently, a news item circulated around the Web about a dispute in the case of Ono v. Lennon. The young singer named Lennon Murphy applied to trademark the name Lennon for, quote, "Entertainment services in the nature of live performances by a musical group, providing information regarding musical artists and providing recorded performances of musical artists by means of a global computer network."
And as you can imagine, Yoko Ono isn't going to let that go, and a, quote, "Cancellation proceeding has been filed at the Trademark Trial and Appeal Board, and is now pending."
All of this over words, but it is really much more, as our next guest will tell you. Joe Dreitler is an attorney who has been deeply involved in trademark law for more than 25 years. He successfully defended former Vice President Al Gore's use of the name Current TV when his media company was launched. Good morning, Joe.
Mr. JOE DREITLER (Intellectual Property Attorney): Good morning, Alison. How are we doing?
STEWART: I'm doing great. So let's just start with the basics. What is a trademark, as opposed to, say, a copyright?
Mr. DREITLER: Okay, the basics. Let's go. Trademark 101. Well, a trademark is defined as a word, a name or a symbol or a combination that's used by one person to identify their goods or services from those of another.
Basically, you think of it as - it's an indicator of origin. It tells you who am I, or who I am. That's what a trademark is. Whereas a copyright and a patent, which are both totally different from that, originated with the Constitution because the founding fathers say gee, we should protect artists and inventors. And so they did. And that's why copyright law goes back as part of the Constitution, and it protects works of art for a very limited time, because that's in the Constitution, as well.
So a copyright is basically a work of art - a book, a song, a photograph, a movie, a painting, and it basically protects the expression of it, not someone's idea. If I have an idea for a great film or a great book about life during the Civil War in the South, I can't protect the idea. I can only protect the expression. It lasts for a limited period of time, about 70 years plus the life of the author, that's been extended, and a patent - again, it's a limited time, 20 years. And that protects functional features and processes that are novel and non-obvious, and it just prevents third parties from selling them.
Obviously, we know things like a new drug, a method of making an airplane - the Wright Brothers had a patent on that, and Edison had a patent on a light bulb. So those are the three pieces that go together to be intellectual property, and trademark is the one that is sort of like it's the gift that keeps on giving.
(Soundbite of laughter)
Mr. DREITLER: You use, it, it lasts forever.
STEWART: It does last forever, but don't I have to protect my trademark?
Mr. DREITLER: Oh, absolutely, you have to protect it. You not only have to use it, because if you don't use it, you lose it. That's the downside of it. And as you can imagine, if you look back at a lot of products that are no longer around, people who own them abandoned them. There's one that obviously that, you know, it's probably not correct to talk about it, but it was a weight-loss product called Aids. It's probably not sold, and I suspect that that trademark's been abandoned by the owner, who doesn't want to use it.
The other part of protecting it is if someone is out there and infringes, or basically rips off your trademark, or what you view as a trademark of yours, you have to go after them. The law requires that. And lawyers have, for years, given the horror stories of what happens if you don't. Terms like elevator and escalator were at one time trademarks.
DREITLER: Furnace was a trademark. And basically, their patent expired, competitors started using the term because there was no other term to use. And courts said, look, you didn't protect that thing, so anybody can use that to describe that product.
STEWART: So is that why a big corporate company like, say, a Disney, or a Viacom, will come down hard if some janitor somewhere paints a Mickey Mouse on the side of a school? You always wonder why a company didn't go after those people.
DREITLER: Yeah. It's absolutely that. Now, part of this is about, what we're talking about, which is licensing and money. We can certainly talk about that. But the other part is, just what you said, which is if you don't go after them, at some point, if another - a bigger competitor that you're actually suing for using one of your trademarks, they will go to the court and say, look, these people had all of these third-party uses of their name. They didn't take any action. They've abandoned rights to their trademark, so why shouldn't I be able to use it? And so, obviously, the lawyers succeed on that, and the suits say, squash them like a bug.
(Soundbite of laughter)
STEWART: All right. We talked about the - we played at the top, the Michael Buffer, let's get ready to rumble. And we also talked about Pat Riley trademarking the phrase three-peat. I want to play for you a phrase that has actually gotten a trademark. Can you hit that for me?
Ms. PARIS HILTON (Socialite): Wow, that's hot. That's hot. That's hot. That's hot. That's hot. That's hot. That's hot.
STEWART: Joe, how is it that Paris Hilton has been able to trademark that's hot?
(Soundbite of laughter)
DREITLER: As like Michael Buffer has been able to do let's get ready to rumble?
DREITLER: Yeah. Well, it goes back to, again, just what we said at the beginning. What is a trademark? It's an indicator of origin. Do you associate that with one person? I mean, I like trademark law because it's so much a part of our life. Walk down the aisle of your corner grocery or the biggest retailer, and you have got trademarks. You have got trade dress, which is the package it's described in, the brands, the logos, all screaming, take me home, take me home. Those are all trademarks. And that's what trademark law is about.
You don't have to know who makes Tide to know that's a brand name, or a trademark, and it should be protected. And so when you ask, how can Paris Hilton do that? Well, the law basically says if a term, even something that that's simple, like that's hot or let's get ready to rumble, becomes so much used in the public and associated with one person, that the public associates with them and no one else, then they can basically claim trademark rights for that use.
And now, of course, the problem with all of this is, it's one thing for her to say it in connection with a TV show. It's another thing for her then to start basically using it on clothes or on booze or on something else. And this basically goes back to what we're talking about, which is trademark licensing, which is not that old in this country. And if you really what to know, it all goes back to the case of a porno film and a portable toilet, if you'd like to hear that story.
STEWART: I think that one might be good for off the air, actually.
DREITLER: No, it really doesn't go that bad. But it's short. I'll summarize it for you, which was back 25 years ago, the people who came up with the porno film, "Debbie Does Dallas," got sued. And they got sued by the National Football League on the grounds - to avoid first amendment problems - that the trade dress, the trademark if you will, of the cheerleader's uniform that the woman wore in that porno movie was a trademark of the Dallas Cowboys. And that basically that was trademark infringement. And the court said, absolutely right, and they enjoined it.
How does the portable toilet come about? Well, 25 years ago, there was an outfit that started selling porta-potties that you see on the side of the road.
DREITLER: And there was an NBC fellow who had basically been using and introduced for many years under his name called - and what do they call a porta-potty? Here's Johnny. Guess who went to court and didn't want here's Johnny used on a porta-potty?
(Soundbite of laughter)
DREITLER: So basically, the court said, absolutely. That phrase, here's Johnny, has been so associated with John W. Carson, that somebody using it on a portable toilet, people would assume that somehow that's connected or sponsored by Mr. Carson, the same thing with the Dallas Cowboy's cheerleader.
And so that's really where Paris Hilton is. It's sort of an extension of that, where you now have phrases that are used by people. Donald Trump did the same thing a few years ago. And it's amazing to me because of the value and the power of licensing, you're talking about all this. I mean, Britney Spears, for all of her issues, you know, brings in over a hundred million dollars a year - I read that figure somewhere - selling and licensing her name to perfume and other products. So there's a lot of money to be made off of licensing trademarks.
And what's interesting is, when you think of Paris Hilton or Britney Spears, is that people out there, ordinary people, file trademark applications for that. I went online to the trademark office, and while we noted that Paris Hilton has registered that's hot for like liquor and clothes, there were 10 or 12 other people, who had no grounds to do it, but filed trademark applications. Now, they all got rejected. But it just shows you that what is the power of celebrity these days, that you can come up with a phrase or a slogan that ties into somebody, and everyone thinks, we can make a buck off it, and they do it.
STEWART: And I know that you think in the world of Internet that getting a trademark is a good thing if you're a small business.
DREITLER: Oh, absolutely. It has to be. And, you know, years ago, 10, 15, years ago, before there were commercial aspects to it, you know, the Alison Stewart spa out on Long Island or in midtown, basically was one place. Nobody knew about it other than if they lived in, let's say, a hundred miles.
Now, you can advertise, you can promote it, you could have more than one. You would get customers coming from all over the country. Now whether that's a spa, or whether that's a small food company, people are advertising on the Internet, and truly, they're doing business literally all over the world. And so to the extent that you want to prevent someone else from trying to do just what we've seen with Paris Hilton, that's hot, and Donald Trump, you're fired, you want to register your name as a trademark. In all seriousness, you really want to do that.
STEWART: But you can't overreach, though. You can't say I'm going to be responsible for every nail salon.
DREITLER: Exactly. And that's the point that courts really - they will protect your rights up to a point. But again, trademark law goes back as part of unfair competition law, and that's what it means. It means fairly compete. And courts hate it when they see people trying to overreach and trying to basically claim rights on something that's way beyond what they're doing.
STEWART: Joe Dreitler, can you stick around for about two or three more minutes? We want to get you to weigh in on this Lennon versus Ono, but we need take a quick break.
DREITLER: My pleasure.
STEWART: All right. We're talking to Joe Dreitler. He's an attorney. He's been dealing with trademark law for more than 25 years. He'll weigh in on this case of this young singer, Rachel, named Lennon Murphy, who has filed a trademark for the name Lennon. Of course, Yoko Ono…
RACHEL MARTIN, host:
I imagine that could cause a little bit of a row.
STEWART: …widow of John Lennon, not too happy about it. We'll get Joe's opinion on the other side of the break.
MARTIN: Also coming up on the BPP, the winner's of the Independent Games Festival. It was part of the 2008 game developer's conference going on in San Francisco right now. Stay with us, lots of good stuff. This is THE BRYANT PARK PROJECT from NPR News.
(Soundbite of music)
MARTIN: Hey, welcome back to THE BRYANT PARK PROJECT from NPR News. We're on digital, FM satellite, and online at npr.org/bryantpark. I'm Rachel Martin.
STEWART: And I'm Alison Stewart. And we're continuing our conversation with Joe Dreitler, a well-known trademark attorney. And Joe, before we let you go, we wanted to ask you about this news story which has been circulating on the Web for about two or three weeks, about this young singer named Lennon Murphy who applied for the trademark Lennon for entertainment services. Of course, Yoko Ono isn't very pleased about this, and she is seeking the cancellation of this trademark. I just want to get your take on this. Is Lennon Murphy within her rights to go after this trademark? Is Yoko Ono doing the right thing? What do you think?
DREITLER: Well, it's sort of where we left off, Alison, when you were saying about overreaching. It's one of those things that lawyers sometimes never have the ability to do. They take a good joke too far, as somebody once said.
The law favors competition. We talked about that. And so, basically, it doesn't want one person to own exclusive rights to use a term that's either merely descriptive, like liquid soap for liquid soap, or merely geographic, like New York for bagels, or merely a surname, like the word Lennon or the word Stewart or the word Dreitler - unless the person claiming it can show that they've been using it exclusively as a trademark for their product for many years and no one else has been using it.
And the reason for that, again, it goes to allow other competitors to use the terms to compete. Like Softsoap - you know, if someone had been using that, it would not have been protectable. And think of Philadelphia-Brand cream cheese. If there had been others back when Kraft started using that name that were selling cream cheese in Philadelphia, that wouldn't be a trademark.
Surnames, again, if you think in 1900 there were five guys that owned car companies named Bruce Ford, Phil Ford, Steve Ford, Fred Ford, and then Henry Ford…
(Soundbite of laughter)
DREITLER: …it would probably be the Henry Ford Motor Company. So it wouldn't be called the Ford Motor Company.
STEWART: So you're saying Lennon is like this.
DREITLER: Exactly. If Ann Klein hadn't been around, Calvin Klein would probably be called Klein. But she was, so he's got to be Calvin Klein. And so that's exactly what we have here, a situation where someone is calming rights to the surname. Not just surname, Murphy Lennon, the name Lennon. And, obviously, Miss Ono is saying, look, my husband was around. He used his name as a trademark for many years, and people, when they hear Lennon and they hear it for entertainment services and (unintelligible)…
STEWART: Guess who they think of?
DREITLER: …compositions, are going to think of him and not you. And if anyone has rights to it, my rights are more superior to yours.
STEWART: Joe Dreitler is an attorney who has been involved in trademark law for more than 25 years. He successfully defended former Vice-President Al Gore's use of the name Current TV. Thank you so much for your time today and yesterday. Joe and I were on the phone for 35 minutes talking trademark law.
(Soundbite of laughter)
STEWART: You love it. You love the trademark…
DREITLER: She loves it. My pleasure, Alison. Have a great day.
STEWART: Thanks, Joe.
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