television show name at DVinfo.net

Gale Smith · August 28th, 2004, 07:05 PM

I am in the process of producing a television show and the name I have picked out is the same as a video that I found on a google search. I went to the uspto website and did a search and found nothing about that name being trademarked or registered. The video itself has a copyright symbol and is a registered trademark of another company. Because the name of the video is not trademarked or registered, is it safe to name my television show that name?

Richard Alvarez · August 28th, 2004, 08:02 PM

To be "safe" you need to do a full trademark search and review. The PTO is a good place to start, but is not always up to date.

Contact a good IP lawyer and they will help you.

Titles can not be copyrighted, but certain phrases may be trademarked.

I am not a lawyer, but there are several who drop in on the boards and will say much the same.

Paul Tauger · August 30th, 2004, 08:34 PM

<<<-- Originally posted by Gale Smith : I am in the process of producing a television show and the name I have picked out is the same as a video that I found on a google search. I went to the uspto website and did a search and found nothing about that name being trademarked or registered. The video itself has a copyright symbol and is a registered trademark of another company. Because the name of the video is not trademarked or registered, is it safe to name my television show that name? -->>>

Registration with the PTO is not required to accrue trademark protection. Common law rights are recognized and enforced under Section 43a of the Lanham Act.

Robert Knecht Schmidt · August 30th, 2004, 09:06 PM

Paul,

I thought you once said that trademark registration is a prerequisite to suing for infringement?

Gale Smith · August 30th, 2004, 09:06 PM

Paul-

Is what you're saying, is that the title of that video is trademarked/copyrighted and I cannot use that name for a television show? Thanks.

Richard Alvarez · August 30th, 2004, 09:32 PM

What Paul is saying, is that you need not register a trademark to have it PROTECTED. This is the same as registering a copyright. A work is copyrighted the moment it is fixed in a tangible expression. You have rights from that very moment. Registering the copyright, makes it MUCH easier to get damages, and specific infringement damages. Much the same happens with a trademark. A trademark may be established once it has developed a relationship with the public, whether or not it is registered. Thats why a thorough search is necessary for registration... to make sure no one else is already using a similar mark somewhere else. Prior use can trump registration.

No, I am not an attorney, and Paul can feel free to clarify this when and if he is not to busy. But I think that's the gist of it.

One more thing, titles can not be copyrighted... but they may be trademarked, especially when they represent an origination point for a product. Think "Star Wars", "Star Treck", etc.

Paul Tauger · August 30th, 2004, 10:10 PM

Richard is pretty close. Neither a copyright nor a trademark needs to be registered for protection to accrue. However, in order to sue for copyright infringement a registration must first be obtained, and damages are limited until the registration is obtained. Trademark, on the other hand, can be enforced and full damages obtained without registration -- the advantage of registration is certain legal presumptions that attach. Trademark rights result from use of the mark in commerce -- these are called common law rights. There used to be something similar for copyright, but these were eliminated in 1978 under the revised Copyright Act.

As a rule, titles cannot be protected either by copyright or trademark. However, some titles can function as tradenames or service marks -- Richard gave a good example. Unfortunately, there is no way to answer the question of usability based on the nominal description provided in a post to this forum, i.e. I'm not saying you can use the title or not -- there's just no way to say without knowing a lot more about the video and what the OP is planning to do.

Richard Alvarez · August 31st, 2004, 08:06 AM

Thanks Paul. I hesitate to jump in on these comments, based on what my wife has explained to me. But I know how busy you lawyers can be, and I hate to see these questions go unanswered, or worse - misguided - for very long.

So now you and I are "neighbors" - having relocated to San Mateo. (My wife is working for a firm in Palo Alto).

Richard

August 28th, 2004, 07:05 PM	#1
Gale Smith Regular Crew Join Date: Mar 2004 Location: Parkman, WY Posts: 45	television show name I am in the process of producing a television show and the name I have picked out is the same as a video that I found on a google search. I went to the uspto website and did a search and found nothing about that name being trademarked or registered. The video itself has a copyright symbol and is a registered trademark of another company. Because the name of the video is not trademarked or registered, is it safe to name my television show that name?

August 30th, 2004, 08:34 PM	#3
Paul Tauger Wrangler Join Date: Sep 2002 Location: Los Angeles (recently from San Francisco) Posts: 954	Re: television show name <<<-- Originally posted by Gale Smith : I am in the process of producing a television show and the name I have picked out is the same as a video that I found on a google search. I went to the uspto website and did a search and found nothing about that name being trademarked or registered. The video itself has a copyright symbol and is a registered trademark of another company. Because the name of the video is not trademarked or registered, is it safe to name my television show that name? -->>> Registration with the PTO is not required to accrue trademark protection. Common law rights are recognized and enforced under Section 43a of the Lanham Act.

August 30th, 2004, 09:06 PM	#4
Robert Knecht Schmidt Wrangler Join Date: Feb 2002 Location: Cleveland, Ohio Posts: 1,933	Paul, I thought you once said that trademark registration is a prerequisite to suing for infringement? __________________ All the best, Robert K S Search DVinfo.net for quick answers \| The best in the business: DVinfo.net sponsors

August 28th, 2004, 08:02 PM	#2
Richard Alvarez Inner Circle Join Date: Sep 2002 Location: San Mateo, CA Posts: 3,840	To be "safe" you need to do a full trademark search and review. The PTO is a good place to start, but is not always up to date. Contact a good IP lawyer and they will help you. Titles can not be copyrighted, but certain phrases may be trademarked. I am not a lawyer, but there are several who drop in on the boards and will say much the same.

August 30th, 2004, 09:32 PM	#6
Richard Alvarez Inner Circle Join Date: Sep 2002 Location: San Mateo, CA Posts: 3,840	What Paul is saying, is that you need not register a trademark to have it PROTECTED. This is the same as registering a copyright. A work is copyrighted the moment it is fixed in a tangible expression. You have rights from that very moment. Registering the copyright, makes it MUCH easier to get damages, and specific infringement damages. Much the same happens with a trademark. A trademark may be established once it has developed a relationship with the public, whether or not it is registered. Thats why a thorough search is necessary for registration... to make sure no one else is already using a similar mark somewhere else. Prior use can trump registration. No, I am not an attorney, and Paul can feel free to clarify this when and if he is not to busy. But I think that's the gist of it. One more thing, titles can not be copyrighted... but they may be trademarked, especially when they represent an origination point for a product. Think "Star Wars", "Star Treck", etc.

August 30th, 2004, 10:10 PM	#7
Paul Tauger Wrangler Join Date: Sep 2002 Location: Los Angeles (recently from San Francisco) Posts: 954	Richard is pretty close. Neither a copyright nor a trademark needs to be registered for protection to accrue. However, in order to sue for copyright infringement a registration must first be obtained, and damages are limited until the registration is obtained. Trademark, on the other hand, can be enforced and full damages obtained without registration -- the advantage of registration is certain legal presumptions that attach. Trademark rights result from use of the mark in commerce -- these are called common law rights. There used to be something similar for copyright, but these were eliminated in 1978 under the revised Copyright Act. As a rule, titles cannot be protected either by copyright or trademark. However, some titles can function as tradenames or service marks -- Richard gave a good example. Unfortunately, there is no way to answer the question of usability based on the nominal description provided in a post to this forum, i.e. I'm not saying you can use the title or not -- there's just no way to say without knowing a lot more about the video and what the OP is planning to do.

August 31st, 2004, 08:06 AM	#8
Richard Alvarez Inner Circle Join Date: Sep 2002 Location: San Mateo, CA Posts: 3,840	Thanks Paul. I hesitate to jump in on these comments, based on what my wife has explained to me. But I know how busy you lawyers can be, and I hate to see these questions go unanswered, or worse - misguided - for very long. So now you and I are "neighbors" - having relocated to San Mateo. (My wife is working for a firm in Palo Alto). Richard