A Taylor Swift Teaching Moment: What is a Trademark

In the past few years I’ve become a fan of Taylor Swift. Perhaps not of her music, but the way she handles her career and her life.  Standing up to Spotify and the paltry royalty rates it pays was just the latest example.

So yesterday I noticed new and mainstream media making a fuss about recent trademark applications Taylor Swift and her team have filed on logos she uses to promote and market her music career.  The reports were full of misconceptions and misstatements about trademark law it was painful to me.  Especially since trademark is a unique type of law that, in the United States, is primarily a consumer protection law.  Significantly, trademark is not the same thing as copyright (e.g. Vulture article)!

What is a trademark anyway?

A trademark is a word, phrase or design, that indicates to a consumer the source of goods or services.  You see trademarks all day, from the moment you wake up to the moment you go to sleep.  Think of them as shorthand for brands:

Cheerios is shorthand for cereal from General Mills

Crest is shorthand for tooth paste from General Mills

T.S. is shorthand for music and merchandise from Taylor Swift

The primary protection afforded trademarks is to prevent third parties from using the same or similar marks in a manner that would confuse consumers as to the source of the goods or services to which they were related. The same word can be used by different people on different products as long as there is not a likelihood the consumers can be confused. Thus different companies use Delta as mark for for transportation, faucets, and dental services.

So what does this have to do with Taylor Swift?

Yesterday, Vox reported that Taylor Swift had filed applications for the registration of a number of marks with the United States Patent and Trademark Office. The marks include THIS SICK BEAT and PARTY LIKE IT’S 1989. The applications are for uses on everything from live entertainment to stationary to aprons.

Vox correctly points out that the registrations will allow Taylor Swift’s team to keep third parties from selling unofficial merchandise. Recent studies indicate that musicians at all levels rely on revenue from everything but the sale of recorded music. Therefore being able to sell t-shirts to fans as well as candles and the like is important even for superstars like Taylor Swift.

I for one love the idea of SWIFTSTAKES from Taylor Swift.  She is incredibly generous with her fans, and I know they will love them too.  I’m grateful she’s such a great role model for my nieces and I can use this story to teach them about trademarks!

Please visit Prager Law to learn how we help clients on trademark matters as well as provide other strategic legal services.

Posted in Intellectual Property, Taylor Swift, Trademark | Tagged , | Leave a comment

Copyright and the King, this time Martin Luther King Jr.

Today is a momentus day. It’s the second inauguration of Barak Obama, the first African-American President of the United States.  Today is also the day on which we honor the memory and legacy of Martin Luther King, Jr., the greatest American civil rights leader of all time. 

Unlike President Obama, however, Reverend King lead from the sidelines not as a politician but as a voice of conscience.   While President Obama can give a good speech none compare to the speeches Reverend King gave on bad days.  Reverend King was one of the greatest orators of all time.

But Reverend King was not an elected official.  When he gave a speech, whether from the pulpit of a church in Memphis or from the steps of the Lincoln Memorial in Washington DC, he did so as a public citizen.  Under the copyright law in effect while he was alive, Reverend King retained the copyright in his speeches regardless of their import to our society.  Had Reverend King been a federally elected politician or appointed official the copyrights would vest with his employer, the American people, and be in the public domain.

However, as a lay leader with a talent for words one of the greatest legacies he left his widow and children were the value those words had.  Associates of Reverend King speak of his generosity but it is important to remember that when he died at the hand of an assassin in my hometown, he had left nothing other than those words for his family.  In fact it is likely that Reverend King knew that the words he wrote had value as he registered the copyrights in his speeches with the Library of Congress as the Copyright Act of 1909 required.  

Over the years since Reverend King’s untimely passing his widow, and children, have struggled with balancing their interest in his legacy with the interest we all have in it. They have exerted control over the words to prevent uses that they felt would not honor Reverend King’s legacy, as well as situations where the use would compete with their interests.  Exerting that control is well within the family’s right as the holder of the exclusive rights to the copyrights in the speeches Reverend King wrote.

Though King’s family is well within their rights when they exercise control over the speeches, many (okay probably most) people find the practice discomforting.  Didn’t Reverend King write those words for all of us?  Aren’t we all supposed to heed the words in his speeches? 

Slate has published an editorial which supposes that tweeting the words of a Martin Luther King speech would be a form of civil disobedience because the action would infringe the copyrights.  The author of the article completely ignores that some uses of the speech, in its entirety as well as segments, may be appropriate without permission from, or compensation to, the King family under the concept of Fair Use.  According to the editorial, a video was removed from YouTube because it included a clip of one of Reverend King’s speeches as an example of copyright being too restrictive.  As I can’t find the video I can’t comment on how the clip was used but it seems to me that Mr. Ammori, the author of the ediotrial, could have made a fair use argument under the commentary exception.  However, instead he, like others, attacks the concept of copyright because the King family feigns to control Reverend King’s legacy.  Most importantly he ignores that Reverend King took the time to register his copyrights to prevent his works from being deemed to be in the public domain.

Posted in copyfight, copyleft, copyright, copyright clearance, copyright infringement, Copyright Policy, copyright term, Uncategorized | Tagged , | Leave a comment

Intellectual Property Enforcement: Have your voice heard

The Prioritizing Resources and Organization for Intellectual Property Act of 2008 (the “PRO-IP Act”) enhanced civil and criminal penalties for intellectual property infringement as well as established the Intellectual Property Enforcement Coordinator to serve in the Office of Management and Budget at the White House. The Intellectual Property Enforcement Coordinator has been charged with overseeing, and contributing to, the development and implementation of the Joint Strategic Plan, an inter-agency plan to combat intellectual property counterfeiting and infringement. The first Joint Strategic Plan, published in 2010, focused on (1) leading by example through a policy of not purchasing or using infringing products; (2) increasing transparency; (3) ensuring efficiency and coordination between agencies and with state and local governments; (4) enforcing rights internationally; (5) securing the supply chain; and (6) building a data-driven Government.

However, Congress recognized that plans to combat intellectual property infringement would need to evolve over time. Therefore it required that the Joint Strategic Plan be revisited every three years. In preparing for the next Joint Strategic Plan, Victoria Espinel, the Intellectual Property Enforcement Coordinator, has requested input from the general public to create a strategy that is “forceful yet thoughtful, dedicated and effective, and that makes good and efficient use of our resources.” Ms. Espinel has stated that “who better to play a key part in shaping the new Strategy than you, the American people.”

Initially, Ms. Espinel seeks specific recommendations from the public regarding the Federal government’s intellectual property enforcement efforts. The recommendations may address any issue related to intellectual property and call for responses ranging from legislation and regulation to changes to practice. Each recommendation, however, should include:

1) a detailed description that states the issue;
2) a solution; and
3) identify the agencies responsible for implementing the recommendation.

Additionally, to obtain specific information, Ms. Espinel has requested feedback to a series of questions which address the issues the Joint Strategic Plan should cover. The scope of the questions is broad, ranging from cooperation between the private and public sector for intellectual property enforcement to steps that the U.S. Customs and Border Protection can take to improve the e-recordation system. Significantly, the Coordinator has requested input on authentication tools and track and trace technologies that the federal government could use to identify counterfeit or pirated goods.

There is no one way to write comments. Comments can range from 50 page formal proposals to informal responses that are only a few paragraphs long (see examples from the 2010 process)

Here are some easy steps to follow if you would like to file comments in response to Ms. Espinel’s request:

1) Read the Request for Public Comments.
2) Follow the formatting and delivery instructions provided in the Notice>
3) Identify the issues on which you are commenting.
4) State your credentials in the licensing industry (licensor, licensee, attorney, etc.) and address the issues from your experience.
5) Indicate whether you are responding as an individual or from an official capacity for an organization or company. If you are provide some information about the organization and its interest in the issue.
6) Provide real-world examples in your response based on your experience in the licensing industry.

Please note that comments are due by 5 p.m. on June 25.















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In the previous posts in the Ideas and the Law Series I addressed the challenges people face protecting ideas once they have been disclosed to third parties. As noted earlier in the series, while the underlying ideas may be available for others to interpret, the way in which you manifest the ideas may be subject to copyright and patent protection. The final installment in the series looks at the roles trademark and trade secrets play.

Trademarks are classified as intellectual property because they are intangible. However trademark law is at its roots consumer protection law. The purpose of trademark law is to prevent consumers from being confused as to the source of goods and services. Marks are the words, logos, and designs that identify the source of goods and services: trademarks identify goods and service marks identify services. While trademark law has its roots in consumer protection, trademarks are now valuable corporate assets.

To qualify for trademark protection, a mark must be distinctive to identify the source of goods and services. The strongest marks are those that are arbitrary and unique (e.g. ACCORD for a car). Weaker marks are those that are descriptive and require secondary meaning to acquire distinctiveness over time, or through investment (e.g. a surname or geographic term). The weakest marks are generic marks where the mark is synonymous with the goods and services to which it applies.

In the United States, certain trademark rights attach automatically to the marks as a result of use in commerce. Fundamentally, under state law, users of a mark may prevent third parties from using the same or similar marks in a manner that could confuse consumers. The degree to which a user of a mark may enforce an unregistered mark depends on a number of factors which differ from state to state.

However, to obtain the greatest amount of protection available for a mark in the United States a mark should be registered with the United States Patent and Trademark Office. A registered trademark has additional rights and benefits otherwise unavailable to trademarks. The owner of a registered trademark has:

The ability to enforce the marks on a national basis;
Access to federal courts for enforcement and statutory damages for infringement
The legal right use of the ® symbol
Recording the mark with US Customs to prevent the importation of counterfeit goods

To obtain a federal registration for a mark, it must meet certain criteria. A mark will not qualify for trademark protection if it is generic. Additionally, a mark that is geographic in nature, primarily a surname or is otherwise merely descriptive may not qualify for trademark protection unless it has become distinctive. Significantly, the mark must not be confusingly similar to other registered marks, or marks pending review.

Trademark rights stem from use in the United States. In the rest of the world, a mark may be registered and protected even if it has not been used in commerce. To be in harmony with the rest of the world, the United States allows users to file applications for registration of a mark that is not yet in use but for which the applicant has a bona fide good faith intent to use within a specific period of time. The USPTO processes “Intent to Use” applications in the same manner as for those in use.

Common law trademark rights are enforceable as long as a mark is used in commerce. A registration with the USPTO is valid for ten years, and may be renewed for ten year terms indefinitely as long as the mark remains in use.

In other countries the first to file a trademark application has priority over other users, even those who have been using the mark. In the United States, a senior user will have priority over a junior user, even if the junior user has the registered mark. However, in other countries the owners of a registered mark will have priority over another user even if the registered mark is not being used in commerce. Therefore, companies launching products or services with the intent to distribute, or manufacture, outside of the United States need to implement a global strategy for trademark registration.

Strategic Practices:

1) Choose marks that are distinctive to identify the goods and services your company offers;
2) Search the USPTO database, and online resources, to determine if there are any marks in use, registered, or pending registration, that are confusingly similar to your mark; and
3) Pursue trademark registration in the countries in which your products will be sold, or manufactured.

Trade Secrets

Trade Secrets are an often overlooked, but incredibly valuable, form of intellectual property. From the original Coca Cola recipe to processes within Wal-Mart and Amazon, some of the most valuable corporate assets are trade secrets. State laws govern what qualifies as a trade secret, and how to protect them.

Nearly every state has adopted the Uniform Trade Secrets Act which defines a trade secret as “information, including a formula, pattern, compilation, program device, method, technique, or process, that: (i) derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable by proper means by, other persons who can obtain economic value from its disclosure or use, and (ii) is the subject of efforts that are reasonable under the circumstances to maintain its secrecy.” However, what qualifies as protectable “information” differs from state to state.

To claim that information is subject to Trade Secret protection “reasonable efforts” to keep the information secret. There are no absolute guidelines as to what qualifies as a “reasonable effort” to maintain secrecy. In addition to limiting access to information to employees and others on a need-to-know basis, companies should implement a comprehensive program to maintain secrecy. The program should be adapted to meet the company’s specific needs but should include marking materials and documents confidential, locking files and doors, requiring passwords for computer access, obtaining non-disclosure and confidentiality agreements from employees, contractors and others.

Strategic Practices:

1) Identify the elements of your business that are unique and keep them secret;
2) Create and implement a “Trade Secret Policy;”
3) Notify recipients of information that the information is secret.


Sharing ideas is an important element of the startup ecosystem. The most common way to protect ideas when discussing business opportunities is to execute Confidentiality and Non-Disclosure Agreements. However, they are not always the best option, and sometimes are not available. Regardless, a Confidentiality and Non-Disclosure Agreement is only as good as the paper on which it written and the person across the table.

Therefore, founders, inventors and creators should implement an intellectual property strategy from the outset. Each form of intellectual property provides different benefits which when combined create the best opportunity to protect the idea which serves as the basis for companies.

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Strategic Practices:




In the first of the Ideas and the Law Series, I addressed what steps you can take to protect an idea. Technically there is little legal protection available unless the person to whom you disclose an idea has a contractual obligation to keep the information confidential, or otherwise not use it. However, if you have developed your idea into something that qualifies for protection as intellectual property you can prevent a third party from using the protected works without permission, and compensation.

The remainder of the Ideas and the Law Series will discuss the four major types of intellectual property:

1) Patent
2) Copyright
3) Trademark
4) Trade Secret


A patent may be granted to processes, machines, methods and compositions of matter that are new, non-obvious and useful. An invention can be for a new product or an improvement on an existing product. Patents are the exclusive rights inventors have to prevent others from making, using, selling or importing their inventions without permission.

The rights are not automatic. Inventors must file an application that sets forth the claims to which the patent would apply with the government to obtain the patent. In the United States, the Patent and Trademark Office can award three types of patents:

1) Utility Patents for discoveries and inventions for a term of 20 years;
2) Design Patents for new and original ornamental design for a term of 14 years; and
3) Plant Patents for the invention of, or discovery of, and asexual reproduction of a new plant variety for a term of 20 years.

To obtain the benefits of a patent, an application must be filed that is both timely and in the right person(s) names. The patent application must be filed in the names of all inventors who contribute a “definite and permanent idea of the complete and operative invention” to the conception of the invention. Under current law failure to file a patent application within one (1) year of the public use, sale, marketing or publishing description of the invention will result in the invention passing into the public domain. In the event that a patent issues on an invention that is later challenged evidence of disclosure of the idea prior to one year before the application was filed will result in the patent being cancelled. However claimants can stop the clock after the initial disclosures by filing a provisional patent application which provides applicants an additional year to file the full application.

Significantly, in September 2011, President Obama signed the American Invents Act, a patent reform bill, into law. The Act, once fully enacted, will overhaul the manner in which patents are prosecuted and enforced. Significantly, beginning on March 16, 2013, the United States will transition from a first-to-invent jurisdiction to a first-inventor-to-file jurisdiction. The transition will create a “race to the courthouse” situation for inventors, and potentially be devastating for small inventors.

Strategic Practices:

1) Share the invention sparsely with people who need to know and only subject to a Confidentiality Agreement
2) Keep an “Invention Notebook” that sets forth the claims of the invention, when disclosures were made, and other pertinent information
3) Have written agreements with all people (employees, contractors, friends) who contribute to the invention

Come back for the next Ideas and the Law post on Trademarks!

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