Risk of registering a brand name that echoes a famous single-word fashion mark?:
I run a luxury event furniture rental company in California (tables, chairs, lounge furniture and bars for weddings and corporate events). We've used our brand name in commerce for about [X years], with an established website and client base.
Our brand name is a common single word + a descriptive word, in the form "[Word] Rentals." The concern: that single word is identical to a very famous single-word mark owned by a major fashion/media company known for aggressively enforcing it, including on dilution grounds, even against unrelated goods/services.
My legal entity uses a different name, and I own an unrelated backup brand/domain I could switch to.
Questions:
1. Given the other mark's fame, how risky is it to file a federal trademark application for my brand in the furniture-rental class (Class 43)? Could filing itself invite an opposition or cease-and-desist?
2. Is it safer to keep using the name without registering (common-law rights), or does staying unregistered leave me exposed?
3. If registration is too risky, how else can I protect the brand I've built?
Thank you.
Eric’s answer:
A full-blown legal analysis of your situation is impossible, because your actual facts are critical in that analysis – and your actual facts should NOT be disclosed in a public forum like this one; and such analysis is way, way beyond a free legal Q&A platform.
Whether you file a U.S. federal trademark registration at the USPTO or not, you are exposed. Filing at the USPTO might increase your visibility to this famous brand – depends upon what brand policing efforts they use. Currently you have an unregistered common law trademark – which like any trademark can be a double-edged sword: in that you should have superior rights to those who use the given mark after your first use; but you may have junior rights to those who used the mark before you.
If this famous brand does not like what you are doing, they can: (1) fire off cease-and-desist (C&D) letters; (2) sue you for trademark infringement and/or for trademark dilution; and/or challenge any of your U.S. federal trademark registrations at the USPTO, if any. I’m not saying they would win or even if such allegations have merit, just pointing out some possibilities and that larger companies are notorious for throwing their weight around with respect to smaller companies, especially with respect to IP infringement, such as, trademark, copyright, and/or patent infringement.
Note, if you do file a U.S. federal trademark registration at the USPTO, you have to make a legal declaration – under penalty of perjury – that you are not aware of any preexisting problematic marks. So, before you file, you might want to hire a trademark attorney for an opinion as to whether or not there is trademark infringement and/or trademark dilution between your brand and this famous brand; and then file only if that clearance opinion supports your filing.
Also, the longer that your brand and this famous brand have coexisted without issues, could be supportive that there is no legal issue between you and this famous brand.
However, if it looks like you picked your branding to ride the coattails of the fame of this famous brand, that’s a factor not in your favor.
If the USPTO were to register your mark, that is evidence supportive that your mark and this famous brand can coexist without legal issue. But such evidence by itself would likely not be controlling in a legal dispute between you and the famous brand.
Can I put a copyright notice on the back of my artwork as opposed to the front?: I've been putting a full copyright notice on the front of my work, usually towards the bottom, saying "Copyright (symbol) (date) (First name) (Last name), All rights reserved." But I would prefer to use a simple monogram in the corner. My idea is to add a certificate of authenticity on the back containing the copyright notice, title, and everything else, and then, when my work is posted online, adding the copyright notice in the caption so people can see it. Is that a valid way to use the copyright notice, or does it have to be directly on the front of the artwork itself?
Eric’s answer:
What you suggest with respect to providing copyright notices should be good. Depending upon the nature of your artwork, putting copyright notices in/on one or more of the following is likely a good practice: a front of the work; a back of the work; a side of the work; a bottom of the work; on a webpage that displays the given artwork; on a webpage where the artwork can be ordered from; as a water mark; a video intro; a video outro; a photo of the work; a screenshot of the work; a display showing the work; noting in your social media; combinations thereof; and/or the like. That is, the better you can support that the world in general is on notice of your copyrights in your artwork, the better for you.
Copyright notice is not a technical legal requirement, but is usually desirable as it can play into determining better damages in a successful copyright infringement lawsuit; i.e., if an infringer was on notice of the copyright then the infringement might be willful and increased damages might be warranted. For example, if your copyright notice is found insufficient, that in an of itself should not be relevant to determining if there is liability for copyright infringement, as the liability determination is “strict liability” and NOT based on intent of the infringer. That is, no notice does not equate to losing a copyright infringement lawsuit.
However, more important than the copyright notice is making sure you are registering your copyrights at the U.S. Copyright Office. If you are only doing copyright notices and not registering your copyrights at the U.S. Copyright Office, that will likely be a huge mistake if you ever need to sue someone for copyright infringement. Timely registration is what opens the door the full suite of enforcement tools, some of which can be very powerful, such as, statutory damages and possibly putting the infringer on the hook for your case costs, including, your attorney fees. But without registration, you cannot even successfully sue in U.S. federal district court for copyright infringement; and without timely registration, the statutory damages and having your case costs covered are not options.
Can I publish anonymously on Amazon KDP, get US copyright, but have my real identity remain hidden?: Is it possible to publish on Amazon KDP and register with U.S. Copyright Office without my legal identity becoming publicly searchable through either? I guess I am most worried about being exposed as the claimant with the U.S. Copyright Office. What is the best lawful way to structure publication and copyright registration to accomplish that?
Eric’s answer:
Whether you can remain anonymous on Amazon KDP is matter of contract law between whatever Amazon KDP requires and that may change from time to time (e.g., as new laws at the state, federal, or international level relate to Amazon KDP’s business come into play).
If a U.S. copyright registration application is prepared and filed properly the “author” can remain anonymous or pseudonymous; BUT, a “claimant” (owner) must be identified in the U.S. copyright registration application. You could create a structure where a business entity (e.g., a LLC or a corp.) that you 100% own and control is the “claimant” (owner), where you transfer your personal copyrights to your business entity and you identify that business entity as the “claimant” (owner) in your U.S. copyright registration applications – but you then will have created additional regulatory and expense obligations for yourself to maintain that business entity (e.g., business tax returns and other filings).