There's No Place Like My Trademark

"home" for geeks

Dear Rich: We have a t-shirt business in which we use a slogan and then add a geographic location -- imagine something like, "I Wish I Were in [City]" or "There's No Place Like [City]." I know our slogan is ornamental and I want to overcome that objection. I have read and talked to other attorney friends that if we can add a logo/artwork to the shirt itself (think "Life is Good" pre-artwork incorporated, and then post artwork incorporated), we would then be able to protect the slogan (in addition to the logo/artwork under copyright law). 

If your goal is to cordon off a few words such as "I Wish I Were in ..." or "There's No Place Like ..." and stop others from using those words in connection with the names of geographic locations, you've got a very difficult challenge ahead of you.
What about Life is Good? The Life is Good trademark strategy (which we wrote about recently) is a combination of scale, legal maneuvering, and aggressiveness. Keep in mind that even though Life is Good merchandise generates $100 million annually and the company has spent a small fortune on trademark registrations and enforcement, other companies have been able to register the mark for other goods and services. And it's not clear -- at least there's no legal precedent -- that the company can stop others from using other "Life is ...." combinations although they've threatened to halt Life is Nutz, Life Sucks, Life is Gay, and even went after LG Electronics' use of Life's Good (the companies settled). In summary, unless you're well-funded, famous, and willing to take an aggressive hardline view of your rights, you'll have a difficult time protecting segments of your slogan.
What is an ornamental objection? The issue of "ornamentality" typically arises when seeking to register a trademark for t-shirts or other clothing and the claimed mark is the featured element of the clothing. The trademark examiner is essentially saying that buyers are not associating the art or logo with a particular source. For example, the buyer of a There's No Place Like Modesto t-shirt does not associate that shirt with a particular source or company. However, the same is not true for the buyer of a Just Do It t-shirt. If you're facing an ornamentality refusal, the USPTO suggests five ways to overcome it.
Creating a slogan and drawing used in conjunction with the shirts. What if you sought to register the words There's No Place Like ... in conjunction with an image? Is that a method of obtaining protection for a phrase that might be otherwise unregistrable? No, not likely. Even if you register the phrase with a design (commonly referred to as a “design plus words mark”), "the strength and value of that protection may be limited." As for the copyrightability of a "design plus words mark," that depends on the degree of originality, creativity and in some cases, ornateness of the artwork (something that even the Life is Gooders had to grapple with). Of course, copyright won't be an issue if all that is copied is the slogan and not the artwork.

Using Lyrics in a Website Logo

Dear Rich: If we would like to use a few lines of a song for a logo that will represent a website or blog logo, is that ok? Traffic to the site is not huge but would like to use it for logo art and if we want to share thoughts on how the song inspired us?  Here are some reasons why you probably won't have to worry about being pursued: (1) If traffic to the site is not substantial, the song owners are unlikely to learn of your use. (2) If the song owners do learn of it, they may not care (unless they find the use offensive). (2) If they do care about it, they probably won't bother to pursue you because a lawyer will likely advise them that you have a fair use defense. (3) If they decide you don't have a valid fair use argument or they want to pursue you for trademark claims, they will likely decide against lawsuit unless they have reason to believe that your pockets are deep. Of course, if the songwriters smell money -- for example, if Facebook, Apple, Amazon, or Google buys your site -- disregard the reasoning, above. Also, because your logo functions as a trademark, to further protect yourself, consider a disclaimer on your homepage stating that the songwriter isn't associated with your site.

Can We Use Author Photos and Quotes?

Dear Rich: We're designing a website for our business, and are in need of some basic guidelines to avoid copyright and trademark violations. Specifically, can photos be used that show up in Google Image searches? Also, can I post a picture of an author and/or quote him/her? What about a company logo -- what is the least expensive way of creating one? We're looking for a little excitement today, so we'll answer your questions in reverse order.
Creating a logo inexpensively. Have you tried typing "create company logo" into your search engine of choice? You should find many businesses that advertise this service for under $50. Our caveat is to avoid using a logo that resembles a competitor's trademark. Learn more about trademarks here.
Can you post a picture of an author and/or quotation? The quote will be fine (read more here) but you may run into problems if the photo of the author is protected by copyright (see below).
Can photos be used that show up in Google Image searches? Copyright law -- we're going to assume you're not familiar with the principles -- enables the copyright owner (often the photographer) to stop others from using the image without permission. So, if you use an image that shows up in Google Image Search and it is protected by copyright, the owner can hassle you and possibly seek compensation for the unauthorized use. (You'll note that when you click on an image in Google Image Search, you may see the message "Images may be subject to copyright.") You don't need to ask permission for images that are in the public domain, a status achieved by old age (or related factors -- for example, if the copyright owner has dedicated the work to the public domain). Alternatively, the owner may retain ownership but permit commercial uses under a Creative Commons license (attribution is typically required). In either case, the rules are complex and often confusing. Some sites offer a wealth of public domain materials and others claim to offer "copyright-free" materials although the pedigree is sometimes difficult to verify. Usually the safest route is to pay for photos at a site such as istockphoto.com. For more specific information, we suggest you hop on your favorite search engine (or pick up our book on permissions).

Does NFL Sticker + Lamp = Infringement?

Dallas Cowboys Glass Table
Lamp from Fansedge.com

Dear Rich: I have what I think may be a complex question and hope you can help me. Let's say I build a custom lamp and I also sell licensed NFL stickers. My question is if a customer would like to purchase a NFL sticker and have it put on the lamp, is that an infringement on the logo? Short answer: It probably depends on who places the sticker on the lamp. If you affix it, you may get a cease and desist letter from the NFL. If the customer does it, you're less likely to have problems.
Isn't that arbitrary? Yes, it is. But in the eyes of the NFL, you become a seller of NFL merchandise once you offer to sell lamps with logos on them, whether it's done at the request of the customer or under your own initiative. By selling a kit, you're less likely to run into problems --  for example, like these tail gate party kits. It's true that the NFL offers kits to create things (including pumpkin carving kits) but you're in a better position for a few reasons, including the first sale doctrine. As a general rule you should avoid including the NFL or team names in your website name or URL, and a disclaimer - "This website is not affiliated with or endorsed by the NFL" - may also help.
Bottom Line Dept. As with so many Dear Rich questions, your inquiry has a lot more to do with how visible you are on the NFL radar screen. If we were you, however, we'd still feel more secure if we were selling the parts separately rather than assembled.