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Orange County Legal Blog

Trademark law history: Who owns the word 'superhero?'

Ask the average American who his or her favorite superhero is, and the person will wax poetic about Batman, Superman, Spiderman and many more "superheroes" who they looked up to as children and probably felt like they had a very personal connection with. In this respect, most Americans would agree that the term "superhero" is a common word in the lexicon and no one has the sole financial rights to it. However, this is not the case.

DC Comics and Marvel are massive comic book generating corporations, and -- supposedly -- they own the legal rights to the moniker "superhero." In fact, if any other comic book maker tries to use the word "superhero" in a title page, Marvel and DC Comics will pursue litigation against them vigorously to seek financial claims. The aggressiveness of these comic book giant's protection of their trademarks on "superhero" have caused many to judge them as "trademark bullies." However, no one has tried to contest their claims on the name.

Responding to a cease and desist letter

At some point in time, most business owners or entrepreneurs will receive a cease and desist letter. While a valid claim is a treat to business owners, these letters are frequently abused for business purposes. In short, a cease and desist letter claims that you are violating someone else’s intellectual property rights. This could be a trademark, copyright or patent infringement. It might be a website domain.

How are patents, trademarks and copyrights different?

Businesses in the United States and internationally have the right to protect their intellectual property. This means that if a company invents an important technology or if a writer drafts a bestselling novel, the technology and the book can be protected from others who may wish to "hijack" it and make money off of it. In this way, intellectual property law protects the right of individuals and organizations to profit from their creative contributions to the world.

In the scope of intellectual property law, there are three ways of protecting inventions and property:

  • Patents: Patents are used to protect inventions, systems and technologies that can be used to serve a specific purpose in the world. Individuals and companies can apply for, buy and sell patents regarding any number of inventions, ideas and creations in this regard by submitting the appropriate applications and paperwork to the federal government.
  • Copyrights: Copyrights are primarily for the author's books, articles, art, music, images and other works. For example, having secured a copyright for something, a California artist will ensure that no one else can buy or sell the paintings or images of the painting that he or she paints.
  • Trademarks: Trademarks relate to the branding of products and the inability of others to essentially hijack another product owners brand to confuse his or her customer base. For example, imagine a beer company has a top-selling beer called "Dolphin Beer." If a competing brand decided to make a beer called Dolphin Brew and made the package very similar, the competing company might be in violation of trademark laws.

What is the United States International Trade Commission?

Have you ever seen the counterfeit handbags being sold that imitate expensive name brands? Have you ever seen a foreign product being sold in a store that looks suspiciously similar in style and packaging to a product made on U.S. soil? These products are likely illegal, and they could give rise to an international trademark dispute.

The United States International Trade Commission (USITC) plays a key role in protecting American industries when it comes to these types of problems. The USITC is a federal agency charged with investigative responsibilities pertaining to trade. The USITC researches how various imports affect domestically-based industries. It also carries out global safeguard investigations. The commission also decides cases regarding trade and trademark infringement by international imports.

The 5 steps to getting a patent

If you want to secure a patent for an invention or technology you or your company has developed, there are several things you'll need to do to ensure that the patent process is successful. Let's take a quick review of the five vital steps to getting a patent:

1. Pinpoint the protection you need

Boxer embroiled in trademark dispute with a makeup company

You might not think that a boxer like Conor McGregor could become embroiled in a trademark dispute with a makeup company, but this is exactly what happened. The boxer recently filed a petition to trademark his infamous nickname, "Mystic Mac." However, Esté Lauder is citing a challenge to the trademarking of the name because of its makeup brand MAC.

MAC is concerned that Mystic Mac could apply his moniker to toiletry brands and it created the "likelihood of confusion on the part of the public." Another company, Mac Jeans, also filed to oppose McGregor's request to trademark his nickname. The jeans company is worried that Mystic Mac could apply his name to clothing and this would create confusion among the public.

What you need to know about trade secret theft

Here’s a brief quiz for you about trade secret theft. Who is most likely to steal your trade secrets?

  1. State-sponsored hackers from Russia or China.
  2. The super-agile burglar who easily defeats your laser grid security system.
  3. Your own salesman.

British brewery won't have to pay royalties to the King of Rock

BrewDog has been making its popular drink, Elvis Juice, since 2015. The India Pale Ale has become the third most popular IPA in England. However, when the Elvis Presley estate caught wind, it filed suit. The Elvis Presley estate claimed that BrewDog hijacked the notorious moniker of the King of Rock himself.

The two owners of BrewDog changed their names to Elvis in response to the litigation, thinking that it could serve to show that Elvis Presley does not have exclusive rights to the use of the name. The Elvis estate initially won the trademark litigation suit. A British court ruled that patrons might believe that Elvis Juice had been officially sanctioned by the Elvis estate.

Take care when choosing a domain name to avoid trademark problems

It's hard to land on a good name for your business and website. In fact, you may feel like all the best names have already been taken -- and it's precisely for this reason that you'll want to take a lot of care when selecting your name and website domain. You don't want either your website domain name or your business name to infringe on another company's trademark.

Here's what you should consider when trying to choose a domain name in this regard:

  • A trademark can be a symbol, design, phrase or word -- or a combination of these -- that a business uses to designate itself apart from other competing businesses. A business has the right to use its trademark and no other business can try to "hijack" that mark from it.
  • If your business name or website name looks similar to another business name or website name, it could create a trademark conflict. The original owner of the name or trademark will likely have the right to continue using it, while you could be forced to stop using it -- and even pay money to the original mark holder if it's shown that your infringement caused monetary losses to the other party.
  • The first person or business to use the trademark in question is the owner of it. Subsequent users must obtain permission from the original owner if they wish to utilize the mark.

Were your trade secrets stolen?

Imagine your former employee is suddenly using all of your trade secrets to create his or her own business that competes with yours. Or, maybe a competing company hired your employee away from you in order to profit financially from the trade secrets your employee learned. In some situations, the law could be on your side.

Federal and California state laws protect your trade secrets in many situations. One federal law, known as the Economic Espionage Act of 1996, makes it illegal to steal trade secrets from another company. In fact, if another company or person tries to steal and profit from trade secrets that belong to another company, it can trigger fines of as much as $5 million and as many as 10 years in prison. Through the Uniform Trade Secrets Act (UTSA), which many states have adopted, those injured by trade secret theft can also sue to protect their trade secrets under state law.

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