Is MLBXX (confusingly) similiar to MLB?

Major League Baseball uses the initials “MLB” as their trademark. Can I register a trademark using MLBXX (Each “X” represents a different letter) if my service is also baseball related?

Like any good netizen, you have eliminated just enough information from your question to make it “safe” for publication on the Internet — and not give away your idea. Yet, trademark questions of all kinds are judgment calls. When a trademark attorney answers a question, they think about the current situation and (probably unconsciously too) compare it to the prior cases that they have read about. I have read hundreds and hundreds (if not thousands and thousands) of cases. There is no rule at law that says if your trademark varies by 40% or more, it is not similar. The first goal of trademark law is to prevent consumers from becoming confused about who is providing them stuff. So, by trying to ask this question anonymously, you have neutered the facts so it would be impossible to even guess an outcome.

Your mark could be any of these: mlbXL, MLB09, mlBAG, MlBOY (lowercase L), MLBUT, MLBAT, MLBUZ. As you can see, each of these gives a different impression, or commercial impressions. So, some of these may be (confusingly) similar to MLB and some may not.

Likewise, simply stating “baseball related service” is not enough. Are you providing stats for MLB on your website? Selling instruction on playing baseball? Providing online retail for baseball equipment? Running an umpire’s union? Each of these service runs in different channels of trade that could effect the analysis. Plus, there are several more factors (known as the “Du Pont” factors) that could be considered in a likelihood of confusion analysis. Then, there is the obvious problem that the MLB mark is famous, and, is probably accorded more protection.

Why would you want to incorporate someone else’s mark? Major League sports of all kinds really value their trademarks. They spend a lot of time and money enforcing their marks. If you need to even “use” the MLB mark to refer to the MLB in a commercial context (and not even as part of your trademark), I would recommend talking to a lawyer first. The lawyer can help you understand how to fairly use the MLB trademark. Confusion would not be the only issue with using the MLB mark, dilution (because of the fame of the MLB trademark) could also be an issue.

So, if you want to avoid receiving a cease and desist letter from Major League Baseball, you should seek the advice of your trademark attorney. In some states (including Arizona, I’m not sure about Florida), the information that you provide to an attorney, even before you hire or pay them, may be protected by confidentiality. Having said this, do not provide confidential information before an attorney ask you for the information. Every attorney has a process for screening potential clients to avoid conflicts and protect existing clients. These “prospective client” laws seems unlikely to protect someone who just randomly sends confidential information to every attorney without invitation.

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.

Can I claim trademark to a product I am importing without the manufacturers consent?

1) There is a European company named “UYT Widgets” 2) They make widgets sold with the trademarks “UYT 1500″, “UYT 2050″, etc. 3) A US distributor that buys and resells the UYT widgets, obtained a trademark “UYT” under the widget class in the US. The US distributor hopes the US trademark will protect against the manufacturer using another distributor. Can the manufacturer make and sell in the US, with a different distributor, different widgets or they same widgets under a new product name, such as “TRE 1500″ made by “UYT Widgets”

Foremost, if the US distributor would like the exclusive right to distribute the European manufacturer’s widgets, the US distributor needs an exclusive distribution agreement. Trademarks do not confer the exclusive right to sell products. Trademarks protect consumers from becoming confused about who is selling them stuff. Protecting consumers from becoming confused is the real purpose of trademarks — Trademarks only protect the companies that own them indirectly.

Even in the best case scenario, the European manufacturer would always be able to compete (directly or with other distributors) simply by using a different trademark. Why? Because with different trademarks consumers would always be able to determine whether the product was coming from the US distributor or the European manufacturer.

Yet, the best case scenario seems very unlikely. The result in a legal contest between the US distributor and the European manufacturer may depend on with whom the consumer associates the widgets. Determining who the consumer is associating the mark with may depend on many factors. Does the distributor sell the goods to retailers or direct to the public? How are the widgets marked and who does the marking? Who else is distributing the widgets in the US? Is the US distributor involved in any type of quality checking of the widgets? Did the US consumer recognize the UYT mark prior to the US distributor’s sale or resale into the US? Is the US distributor providing any additional services, such as support, warranty work, service contracts, or customization? Why did the European manufacturer allow the registration of the “UYT” mark at the US Trademark Office? Was there any “bad faith” on the part of the US distributor during registration? What other circumstances surround the sale of the widgets? And, even worse, even if every factor was in favor of the US distributor, if the European manufacturer were “surprised” by the US distributor’s claim to a trademark, the cost of proving that the US distributor is correct in a court of law would be a very expensive endeavor. Moreover, the European manufacturer, unless they have an ongoing agreement to sell widgets to the US distributor, could simply stop selling them their widgets.

Why is there so much complexity to this question? Curiously, in most European countries, trademark rights are conferred only by the process of registration. So, a strategy like this may have more predictable consequences in European nations. In the US, trademark rights come from three sources: 1) Federal registration, 2) state registrations and state laws, and 3) rights that “spring” from the common law because of actual sale of the trademarked product. In this situation, there is likely a conflict between these rights at various levels. Furthermore, the US law will consider other circumstances, such as, the circumstances surrounding the registration of a mark.

So, if you are looking for exclusive rights to distribute, get an exclusive distribution agreement. If you wish, have this agreement deal directly with the issue of who will own, enforce and enjoy the US trademark rights to avoid any conflicts. An exclusive distribution agreement that assigns the US trademark rights to the benefit of the US distributor would certainly favor the US distributor. If you are thinking of your trademark claim as a indirect way of gaining the exclusive right or control to sell a product in the US without the consent of the European manufacturer, you are clearly headed for an expensive legal battle that you may not clearly win. Consult your trademark lawyer for advice on how to proceed. Your US registration is a valuable right, but, you must exercise some caution if you have not proceeded with the help of a trademark attorney.

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.

How to respond to a trademark office action that refuses or rejects your trademark application.

When responding to a trademark office action, you need to consider:

1. any statements you submit to the Trademark Office may be later used against you;
2. the statements of the trademark examining attorney might be used against you if you do not present argument or evidence to clarify or rebut the examiner’s position;
3. if there is a “likelihood of confusion” with another trademark;
4. if the trademark may be “descriptive” or generic term for the stuff in your goods and services;



5. any other grounds for refusal, for example, formalities, trademark samples, ornamentation, geographic significance, deceptiveness, false connections, etc.;
6. what kind of evidence was presented by the trademark examiner;
7. what types of evidence are available to you to support your trademark;
8. what will be the impact of limiting or clarifying your trademark;
9. what relationship you have to any third-party who’s trademark may be mentioned in the office action; and
10. whether and how you should interview the trademark examiner.

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