About: Andrew P. Lahser, Scottsdale Trademark Attorney

Profile: Mr. Lahser helps small businesses protect their concepts in commerce. Mr. Lahser practices as a trademark attorney next to Scottsdale, Arizona in Fountain Hills. Mr. Lahser is admitted to practice law before the Arizona Supreme court and the US Patent and Trademark Office. Mr. Lahser offers trademark information and trademark law help online for small businesses, including entrepreneurs and start-ups.

Articles by Andrew P. Lahser, Scottsdale Trademark Attorney:

Counterfeit Tiffany Ring on eBay?

I just listed a Tiffany ring on eBay. I originally received the gift as a Christmas present. Tiffany’s lawyers say the ring is fake. The sent me a letter demanding $450, a letter from my lawyer and the ring. I am not sure if this is a fake Tiffany ring. I thought it was a real ring.

First, you are going to need to know whether or not this is a real Tiffany & Co. ring. It is possible that you may not be able to figure this out on your own. You may need an appraiser or another expert’s help if you don’t have the original sales paperwork.

Second, you should know that many companies with strong brands now “police” ebay to ensure that their goods are not being “faked” or counterfeited. These companies hire lawyers to create automated computer systems to search ebay to find goods that might be infringing on their client’s trademarks or counterfeiting their client’s goods. This may be what is happening to you. Remember the lawyers that sent you your letter may have very little information. These lawyers may seek to broadly enforce their client’s right, even with minimal information. In other words, you may get a letter like this, even when you have the real thing. Counterfeiting is a real problem on ebay. If you bought counterfeit goods there, you would not be happy, and companies are responsible for making sure others do not use their trademarks for counterfeiting.

What you will do will depend on many other factors. Where did the ring come from? Do you have your original purchase paperwork? Has ebay de-listed the item? How did you list the item on ebay? Does the ring actually resemble a Tiffany ring? There is no single correct way to respond to a letter like the one you received. Your response depends on what you have done and what you know.

If Tiffany & Co.’s lawyers sent you this demand letter and the ring is authentic, that would be exceptionally bad form. They should be very, very, very embarrassed for threatening their own customer with legal action.

You may wish to consult with your attorney to help you decide what actions to take next.

Should you trademark your band name?

Use of a comic book character name as a band name??

My band recently picked the name “Matches Malone” to go by. The name “Matches Malone” is a very minor DC comics character. After several online searches I can not find any sign that this name is trademarked. My band has started the processor making t-shirts and other products with this name printed on them. So I need to know if this is ok. Thanks, Dallas

I know how difficult it is to get a group of musicians to agree on a name. However, most bands should do two things. First, have an trademark attorney do a “trademark clearance” (which will include a professional search). Second, file for a trademark at the US Trademark Office.

This is going to add to the start-up cost for the band. It is going to take more than a couple of Gigs to pay for this. However, the name of the band is the most important asset (after your website). It is the way people will spread the word about your band. You will not know who is saying the name of your band, and, you will not be able to contact them should you need to change the name. For these reasons, bands really need to do a little extra, professional trademark work.

There is one other reason that most bands need to protect their name. Most bands become an “overnight success” in just three or four years. In other words, many bands now develop through online marketing in addition to live performances, over a period of time. The exception to this is when there is a real advertising budget, for example, when a band is recording for a label. When a label in involved, they clear the name of the band before the first t-shirt is ever printed.

So, a name-change for a band that is brought on by a trademark problem can be really devastating. It literally can destroy years of marketing work, and, it will most likely happen as you are finally getting the word out about your band. Literally, you will disappear from your local public’s eye as you are forced to change your name. In other words, as you get more successful, and your name gets around more, the more likely a senior trademark holder will complain about your use of your name (if it is improper or infringing.)

If your budget is really, really tight. You might consider self-filing a US Trademark application at the US Trademark Office. The filling fee can be as low as $275 for a single class. If you plan to do more than just live performances, I recommend two classes at double the cost. Then, you can protect both your live performances and sales of pre-recorded music, like CDs, DVDs, downloadable music, etc. A trademark registration that hangs around for five years or longer can become incontestable, if you submit the right affidavits at the right times. If you self file, take your time. Be sure to read the article about avoiding trademark mistakes.

Trademarks do not have to be registered. Trademarks spring from their use under the common law. Most comic book characters are protected as trademarks. It may not matter that you did not find a registration, DC Comics might complain later, much later. Trademarks protect people from becoming confused about who is providing them with stuff. If the public assumes there is some connection between your band and DC Comics, you will have trouble eventually. Even if the public does not make that assumption, DC Comics may still complain (rightfully).

If you are serious about this name, get some help from a trademark attorney. There could be other factors that might indicate that this name would be available.

Get your client’s permission

Can I use the letters and cards I receive from my clients on my website without their permission? [Read more]

TM UPS Brown Gone Bad

The UPS driver was here today. He told me about a fake-brown UPS truck that was pulled over by a Department of Public Safety Detective. Before I go further, I should say that colors are difficult to trademark. Why? Because, the consumer must associate a particular color with a particular service or product. Famous color trademarks include John Deere Green and UPS Brown. [Read more]