5.2 Trademark and brand protection

Trademarks are crucial for media companies to protect their brand identity and maintain market share. From logos to slogans, these distinctive marks help consumers identify the source of goods and services. Understanding trademark law is essential for navigating the competitive media landscape.

Registering trademarks with the USPTO offers legal benefits, but companies must actively enforce their rights. Media firms often face challenges in protecting their marks, from counterfeit merchandise to unauthorized use of character names. Balancing trademark protection with fair use is an ongoing challenge in the industry.

Trademarks for Brand Protection

Defining Trademarks and Their Role

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  Brand Equity Model | Reviewing the Concept of Brand Equity View original

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• A trademark is a word, phrase, symbol, design, or combination thereof that identifies and distinguishes the source of goods of one party from those of others
• Trademarks serve as source identifiers assuring consumers of consistent quality and preventing confusion in the marketplace
  • For example, the Nike "swoosh" logo identifies athletic products as originating from the Nike company
• Media companies rely on trademarks to protect their brand identity, build consumer loyalty, and maintain market share in a competitive industry
  • The "Netflix" trademark helps consumers identify the streaming service and its original content
• Trademark rights are acquired through use in commerce, but registration provides additional benefits and legal presumptions
• Trademarks can be licensed to third parties for use on related products or services, generating additional revenue streams for media companies (merchandise, product placement)

Acquiring and Registering Trademarks

• Trademark rights arise from use in commerce, but federal registration with the USPTO provides additional benefits
  • Legal presumption of ownership
  • Right to use the ® symbol
• The USPTO examines trademark applications to ensure the mark is distinctive, not confusingly similar to existing marks, and not barred by other statutory refusals
  • Marks must be distinctive and not merely descriptive or generic
  • Marks cannot be confusingly similar to existing registered marks
• Trademark owners must actively police their marks and enforce their rights against infringers to prevent consumer confusion and dilution of the mark's distinctiveness

Trademarks vs Service Marks vs Trade Dress

Service Marks

• Service marks are similar to trademarks but identify and distinguish the source of services rather than goods
  • The "YouTube" service mark identifies the video-sharing platform and its related services
• In the media industry, service marks may protect titles of television series or names of streaming platforms
  • "Game of Thrones" is a registered service mark for the HBO television series
  • "Hulu" is a registered service mark for the streaming service

Trade Dress

• Trade dress refers to the overall appearance and packaging of a product, including features such as size, shape, color, texture, and graphics
• Trade dress can be protected if it is inherently distinctive or has acquired secondary meaning, serving to identify the source of the product
  • The distinctive shape of the Coca-Cola bottle is protected as trade dress
• In the media industry, trade dress could protect distinctive DVD packaging or app icons
  • The red Netflix envelope used for DVD mailers is a recognizable trade dress

Trademark Registration and Enforcement

Trademark Registration Process

• Trademark rights arise from use in commerce, but federal registration with the USPTO provides additional benefits, such as a legal presumption of ownership and the right to use the ® symbol
• The USPTO examines trademark applications to ensure the mark is distinctive, not confusingly similar to existing marks, and not barred by other statutory refusals
  • Marks must be distinctive and not merely descriptive or generic
  • Marks cannot be confusingly similar to existing registered marks
• Once registered, trademarks must be continuously used in commerce and renewed every ten years to maintain protection

Enforcing Trademark Rights

• Trademark owners must actively police their marks and enforce their rights against infringers to prevent consumer confusion and dilution of the mark's distinctiveness
• Enforcement actions may include cease-and-desist letters, opposition or cancellation proceedings before the USPTO, or infringement lawsuits in federal court
  • Cease-and-desist letters demand that the infringing party stop using the mark
  • Opposition proceedings challenge pending trademark applications before they are registered
  • Cancellation proceedings seek to cancel an existing trademark registration
• Remedies for trademark infringement may include injunctive relief, monetary damages, and in some cases, attorney's fees and costs
  • Injunctive relief orders the infringing party to stop using the mark
  • Monetary damages compensate the trademark owner for losses caused by the infringement

Trademark Infringement in Media

Defining Trademark Infringement

• Trademark infringement occurs when an unauthorized party uses a mark that is identical or confusingly similar to a protected mark in a way that is likely to cause consumer confusion
• Courts consider factors such as the similarity of the marks, the relatedness of the goods or services, the strength of the plaintiff's mark, and evidence of actual confusion when evaluating infringement claims
  • The more similar the marks and the more related the goods or services, the higher the likelihood of confusion
  • Strong, distinctive marks are afforded greater protection than weak, descriptive marks

Notable Trademark Infringement Cases in Media

• In the media industry, trademark infringement cases often involve disputes over movie or television show titles, character names, or merchandising rights
• Disney has actively enforced its "Star Wars" trademark against unauthorized merchandise
  • Disney has sued third parties for producing counterfeit "Star Wars" toys and apparel
• Warner Bros. has protected its "Harry Potter" trademarks and trade dress
  • Warner Bros. has taken action against unauthorized "Harry Potter" themed events and merchandise
• Trademark parody cases, such as the "South Butt" spoof of North Face apparel, test the boundaries of free speech and fair use in the context of trademark law
  • The "South Butt" case examined whether the parody mark was likely to cause confusion or dilute the North Face brand