They've taking trademarking too far.

[Zyada]

It was bad enough when Monster cable sued anyone who used the word "monster" anywhere in their company, and when Monster energy drink tried to get Vermonster for trademark infringement.

Now Kleenex has trademarked the phrase "Let it out". WTF? :confused: :dubious: :rolleyes:

[mswas]

Heh, Disney with the 100 year extension on Mickey Mouse took it pretty far.

[Zyada]

At least Mickey is actually the product of someone's creativity.

Hey Kleenex - did you know that there are over 3,000 books in Google Books (http://books.google.com/books?q=%22let+it+out%22&btnG=Search+Books) with the phrase "let it out"? Plus at least two songs with that title?

[DMark]

There are lots of "cola" drinks, but if you tried to market "Coco Cola", I think it would only take a megasecond for some attorneys in Atlanta to come swarming down on you.
The point is, that the makers of "Coco Cola" would intentionally be trying to siphon off customers of Coca Cola by confusing them.

Regarding Monster - OK, that might seem silly, but we all know Monster.com right? They are an online job hunting/marketing business. If I start a new website called Monsters.com and only sell masks for Halloween, there is no case - two different types of business and no chance of confusing a customer.
However, if I start a job seeking website called Munster or Monstor or Monstar - well, you could make a good case that I was trying to use the name to confuse people into thinking I was Monster.com and they would easily be able to shut down that new website.

Same thing goes for taglines like "Let it out!"
As long as that is a tag for a facial tissue product, they could sue another facial tissue product for using some variation of the tag line, trying to confuse the general public into thinking they were the same product.
But if you had a line of elastic belts and used the phrase, "Let it out!", there would be no confusion as they are two different products.

It does get tricky with some catch phrases - my guess is "You deserve a break today..." from McDonalds might be pretty rock solid after all these years and a case could be made that any use of that phrase whatsoever, by any company, would make people think that product had something to do with McDonald's corporation - even if it was a brake repair shop using "You deserve a brake today.... This is when things go to trial. In this case, I think McDonalds would win, as it would be fairly easy to prove the catch phrase is easily identified as McDonalds' by the general public.

Trademark attorneys do lots of work when registering names and logos and tag lines - they have to research and be certain they are not infringing on a current mark. They also have to work hard to keep their mark from being copied or used by other companies. There was an entire department in the film studio where I worked that did nothing but register trademarks, and stop people from trying to use their trademarks.

One job that was interesting - if a script came along, they would give it to a few attorneys who would pour over every name in the script; you had to be careful not to use some company name or logo that is actually a real company or similar logo. You had to make certain that your fictitious, lead character name of Senator Martin McAllen was not the real name of a Senator in some state. There were occasional slip ups and people would sue the film studio if they thought their name/company was being used. Rarely would they win, but if you had an "evil doctor" named Dr. Xacto in Pasadena in the film, you had better be damned sure there isn't coincidentally really a Dr. Xacto in Pasadena or you're screwed.

[Larry Mudd]

There are lots of "cola" drinks, but if you tried to market "Coco Cola", I think it would only take a megasecond for some attorneys in Atlanta to come swarming down on you.There's a certain irony in how wide of the mark Coca Cola has drifted since 1886. Coca Cola: No coca (http://en.wikipedia.org/wiki/Coca), no cola (http://en.wikipedia.org/wiki/Kola_nut).

[mhendo]

Heh, Disney with the 100 year extension on Mickey Mouse took it pretty far.If you're talking about the legislation passed by Congress some years back, i believe that related to copyright protection, not to trademark issues. The two things are quite different.

[mhendo]

DMark, you might be right about how the system is supposed to work, but it gets problematic when a company with deep pockets decides to go after anyone who uses the name at all. The Monster cable company is notorious for suing anyone who uses the term "monster" in their product name, no matter how far removed their product is from audio-visual cables. Even if the objects of these suits end up winning, it costs them money and hassle and stress to fight these claims. One recent example was when they went after a company called Monster MiniGolf.

[Zyada]

If companies were as reasonable as that, I would have no problem; however:

Vermonster (http://www.rockartbrewery.com/VERMONSTER.html) was a well-established local beer in Vermont before Monster enegy drink (http://en.wikipedia.org/wiki/Monster_Energy) existed; furthermore, there is no way you could confuse the two logos.

Then there is Monster Cable, which has, per Wikipedia (http://en.wikipedia.org/wiki/Monster_Cable_Products), sued the following for trademark infringement:


Snow Monsters (a kid's skiing group)
MonsterVintage, small used clothing store
Monsters, Inc., an animated feature film
Monster Garage, a television series
Monsters of the Midway, a nickname of the Chicago Bears football team
Fenway Park's Monster seats
Monster.com employment website
Monster Mini Golf
Monster Balls Paintballs manufactured by JT Sports
Monster Transmission


I agree that companies shouldn't try to mimic other companies to deceive customers, but companies also shouldn't be able to harass other companies legitimate existing companies.

[Marley23]

I agree that companies shouldn't try to mimic other companies to deceive customers, but companies also shouldn't be able to harass other companies legitimate existing companies.
I'm with you 100%, but this is probably a case of the drink company being overzealous about not letting their brand name become genericized. Not that that would realistically happen to them anyway.

[mswas]

At least Mickey is actually the product of someone's creativity.

Someone who is dead, and doesn't own it anymore yes.

[GuanoLad]

Someone who is dead, and doesn't own it anymore yes.Disney is one of the biggest companies in the world. As soon as Mickey was created, it wasn't about the person who created it, but the company's use and ownership. You have to make an allowance for the creation of a symbolic, instantly recognisable, and enduring trademark icon.

[BigT]

Disney is one of the biggest companies in the world. As soon as Mickey was created, it wasn't about the person who created it, but the company's use and ownership. You have to make an allowance for the creation of a symbolic, instantly recognisable, and enduring trademark icon.

It wouldn't bother me so much if Mickey Mouse were a trademark. But it's still under copyright.

And, really, it isn't that I really care about to use Mickey in public domain works. But it has delayed a lot of other stuff from becoming public domain, as no one can play favorites.

I think they should've designed the system where it couldn't be applied retroactively, so the businesses couldn't try to change the law for their own benefit.

[Mindfield]

Anyone who has spent some time in the iPhone community should be familiar with the Edge Games saga (http://tigsource.com/articles/2009/05/29/tim-langdell-the-edge-of-insanity) (and its followup (http://www.tigsource.com/articles/2009/06/09/tim-langdell-and-edge-part-two)). There's far too much insanity and douchebagginess to put in a nutshell, but suffice it to say, Tim Langdell has been on a lawsuit rampage for years, suiting anyone and everyone who dares use the word "edge" in any fashion, in any industry -- and the sad part is, he's managed to settle lots of them out of court. As in, he's gotten other companies to agree, even when his claims were ridiculous and would have been tossed.

[mhendo]

It wouldn't bother me so much if Mickey Mouse were a trademark. But it's still under copyright.

And, really, it isn't that I really care about to use Mickey in public domain works. But it has delayed a lot of other stuff from becoming public domain, as no one can play favorites.

I think they should've designed the system where it couldn't be applied retroactively, so the businesses couldn't try to change the law for their own benefit.Adding 20 years to the copyright expiry was fucking retarded, and nothing more than spineless legislative caving to the interests of big business. Possibly one of the worst, most corrupt decisions taken by Congress in recent memory. And that's quite an achievement.

[Patty O'Furniture]

Then there is Monster Cable, which has, per Wikipedia (http://en.wikipedia.org/wiki/Monster_Cable_Products), sued the following for trademark infringement:


Snow Monsters (a kid's skiing group)
MonsterVintage, small used clothing store
Monsters, Inc., an animated feature film
Monster Garage, a television series
Monsters of the Midway, a nickname of the Chicago Bears football team
Fenway Park's Monster seats
Monster.com employment website
Monster Mini Golf
Monster Balls Paintballs manufactured by JT Sports
Monster Transmission


No wonder their wires cost so damn much. They're paying for an army of full-time lawyers.

[Mindfield]

No wonder their wires cost so damn much. They're paying for an army of full-time lawyers.

Nah. They're just trying to convince everyone that their mediocre hardware is actually worth the money. They're kinda like Pear Cable (http://www.pearcable.com/), only not as expensive and a lot more litigious. I avoid Monster at every opportunity except for a series of Monster power bars I have because they were being cleared out 2 for $15 a few years back.

[commasense]

I started a thread (http://boards.straightdope.com/sdmb/showthread.php?t=243945)five and a half years ago about the fact that the AMC Theater chain had trademarked the phrase "Silence is Golden." As I said then, ... just what is the service that AMC is providing? They're telling us to shut up. This is a service? (And it's not even a particularly obvious or direct way to say "shut up" at that.)

Secondly, what benefit does AMC gain from obtaining a service mark on this phrase? In other words, why did they bother? How does this put money in their pocket or give them a competitive advantage? They can prevent other theater chains from using this phrase. So what?Cantakerist offered a thoughtful and plausible explanation of their thinking, if you're interested.

But I still think it's a rather stupid case of trademarking.

[rjk]

Just the other day, a company called SparkFun Electronics, who sell kits and parts for hobbyists, received a cease-and-desist letter from SPARC International, who make (dare I say it?) monster servers for large organizations. SparkFun posted the letter here (http://www.sparkfun.com/commerce/news.php?id=300) with a good discussion of the issues.

Too bad there are people out there who like to be bullies.

[Isamu]

It was bad enough when Monster cable sued anyone who used the word "monster" anywhere in their company, and when Monster energy drink tried to get Vermonster for trademark infringement.

Now Kleenex has trademarked the phrase "Let it out". WTF? :confused: :dubious: :rolleyes:


Meh

Trademark law is not unfair, at a grass roots level. If Monster Cable® has a valid claim of trademark infringement against a competitor then they will usually prevail, if not, then they won't.

Stripping away all the filigree, trademark law is there for one reason - to stop companies from passing off their products or services as someone elses, and thereby protecting consumers who might otherwise buy a product or service believing it was from a different source.

Trademarks are an indicia of source.

Registering a trademark is just the first step and there is very little quality control as to who is allowed to register a trademark (generally speaking, on a world-wide basis).

But if you want to enforce your trademark against alleged infringers, then you are in a whole different ballpark.

[Isamu]

I started a thread (http://boards.straightdope.com/sdmb/showthread.php?t=243945)five and a half years ago about the fact that the AMC Theater chain had trademarked the phrase "Silence is Golden." As I said then, Cantakerist offered a thoughtful and plausible explanation of their thinking, if you're interested.

But I still think it's a rather stupid case of trademarking.

That's cankerist by the way. :p

I haven't used that username since SDMB went to a pay system. I know that there is a rule against having two usernames, and I was once directed to tubadiva? to have it resolved, but for the life of me I couldn't find tubadiva at the time.

[YogSosoth]

It wouldn't bother me so much if Mickey Mouse were a trademark. But it's still under copyright.

And, really, it isn't that I really care about to use Mickey in public domain works. But it has delayed a lot of other stuff from becoming public domain, as no one can play favorites.

Just to see if I got it right, in 20 years (or whenever that extension is up) anybody would have been able to use Mickey for any purpose? That sounds wrong, both in the apparent violation in trademark and necessity. As in, if they have it trademarked already, what's the point of the copyright?

[mhendo]

That sounds wrong, both in the apparent violation in trademark and necessity. As in, if they have it trademarked already, what's the point of the copyright?Huh?

Why does it sound wrong? I don't understand what you're arguing here.

[The Hamster King]

As in, if they have it trademarked already, what's the point of the copyright?Trademark is intended to prevent confusion in the marketplace, not protect intellectual property. So if all Disney had was a trademark, someone could conceivably still use Mickey Mouse without permission so long as it clearly wasn't confusing to consumers. (Now MM and Disney are such well-known and well-established brands that's very unlikely, but if you're a Disney lawyer, are you going to take that chance?)

[Isamu]

Just to see if I got it right, in 20 years (or whenever that extension is up) anybody would have been able to use Mickey for any purpose? That sounds wrong, both in the apparent violation in trademark and necessity. As in, if they have it trademarked already, what's the point of the copyright?

That's not really correct. Mickey is trademarked and trademarks (can) last forever.

So unless you have a license from Disney, you'll probably never be able to sell your goods/services under a Mickey Mouse trademark without risking a Disney shark-attorney attack.

[Spectre of Pithecanthropus]

There's a certain irony in how wide of the mark Coca Cola has drifted since 1886. Coca Cola: No coca (http://en.wikipedia.org/wiki/Coca), no cola (http://en.wikipedia.org/wiki/Kola_nut).That's not quite true. According to the Wikipedia article you linked to, decocainized coca leaf is still used as a flavoring agent in the manufacture of Coca-Cola.

People often confuse "coca" and "cocoa", not surprisingly often when talking about Coca-Cola. I think it was in the movie "Marley and Me" where a journalist says he's going to do a story on the illicit drug trade and follow the cocoa leaf from plantation to the streets of Miami. I couldn't help wondering what he would think when he eventually ends up in a Starbucks staring into a cup of hot chocolate!

[Kimmy_Gibbler]

Then there is Monster Cable, which has, per Wikipedia (http://en.wikipedia.org/wiki/Monster_Cable_Products), sued the following for trademark infringement:


Snow Monsters (a kid's skiing group)
MonsterVintage, small used clothing store
Monsters, Inc., an animated feature film
Monster Garage, a television series
Monsters of the Midway, a nickname of the Chicago Bears football team
Fenway Park's Monster seats
Monster.com employment website
Monster Mini Golf
Monster Balls Paintballs manufactured by JT Sports
Monster Transmission



I am going to pass on the substance of this post, other than to aver that DMark has given a pretty good summary of the matter, especially in noting that the trademark monopoly typically only operates within a certain field of products.

However, Monster Cable has never sued the Chicago Bears. Wikipedia, while better than it once was, should never be mistaken for a reliable source. Dopers have a lot of misplaced credence in that website, and this is a good opportunity to remember its significant limitations.

[runner pat]

I am going to pass on the substance of this post, other than to aver that DMark has given a pretty good summary of the matter, especially in noting that the trademark monopoly typically only operates within a certain field of products.

However, Monster Cable has never sued the Chicago Bears. Wikipedia, while better than it once was, should never be mistaken for a reliable source. Dopers have a lot of misplaced credence in that website, and this is a good opportunity to remember its significant limitations.

According to this article (http://www.sfgate.com/cgi-bin/article.cgi?file=/chronicle/archive/2004/11/08/BUG1J9N3C61.DTL&type=business), they have.

According to the U.S. Patent and Trademark Office and court records, Monster Cable has gone after other notable monsters:

-- Walt Disney Co., which distributed Pixar Animation Studios' hit film "Monsters, Inc.''

-- Bally Gaming International Inc. for its Monster Slots.

-- Hansen Beverage Co. for a Monster Energy drink.

-- The Chicago Bears, whose nickname is "Monsters of the Midway.''

[Isamu]

From the Wall Street Journal

http://online.wsj.com/article/SB123869022704882969.html

"All in all, Monster Cable says it has fought about 190 monster battles at the U.S. Patent and Trademark Office and filed around 30 monster lawsuits in federal courts."

[Kimmy_Gibbler]

According to this article (http://www.sfgate.com/cgi-bin/article.cgi?file=/chronicle/archive/2004/11/08/BUG1J9N3C61.DTL&type=business), they have.

Monster Cable has a webpage (http://www.monstercable.com/monster_truth/) where it asserts that it "never sued the Chicago Bears." Now, this is a ballsy statement to put on your corporate webpage if it isn't true.

Now, it is not the case that there has been no interaction between Monster Cable and the Chicago Bears. In Proceeding No. 76331133 before the Trademark Trial and Appeal Board of the USPTO (an Article I tribunal), Monster Cable sought and received a sixty-day extension of time during which to challenge the Bears' mark in "Monsters of the Midway." Monster Cable did not further prosecute the matter (the docket and the filings can be viewed through http://ttabvue.uspto.gov/ttabvue/). At no point did Monster Cable request that the USPTO cancel the Bears' trademark, thus belying the claim that the two were engaged in adversarial proceedings of any sort.

It's easy to see how this ex parte motion to toll the running of the trademark opposition deadline might be construed as a lawsuit among amateurs. However, and unlike Wikipedia, the SDMB has aspirations beyond dilettantism.

[zamboniracer]

At no point did Monster Cable request that the USPTO cancel the Bears' trademark, thus belying the claim that the two were engaged in adversarial proceedings of any sort.

It's easy to see how this ex parte motion to toll the running of the trademark opposition deadline might be construed as a lawsuit among amateurs. However, and unlike Wikipedia, the SDMB has aspirations beyond dilettantism.

Saying Monster Cable "at no point request" that the Chicago Bears' trademark be canceled seems to be overstating the case to me. It appears that the cable company did take the initial steps to contest the Bears' trademark but abandoned the effort. The fact that a case exists within the system belies the claim that Monster Cable never took any action against the Bears and NFL Properties.

Has Monster Cable ever complained about the Muppets' Cookie Monster, the Loch Ness Monster or the Lake Erie Monsters minor league hockey team? :D

[commasense]

Just to see if I got it right, in 20 years (or whenever that extension is up) anybody would have been able to use Mickey for any purpose? That sounds wrong, both in the apparent violation in trademark and necessity. As in, if they have it trademarked already, what's the point of the copyright?If/when the copyright on any specific Disney work expires, it means that anyone will be able to make copies of that work, not use any image of Mickey for any purpose.

So, for instance, someday you may be able legally to produce and sell your own DVDs of Steamboat Willie (http://www.youtube.com/watch?v=AEEaT_UQnVM) (1928), the first sound short starring Mickey Mouse. You could incorporate it into a movie you were making, without permission from or payment to Disney. But its entry into PD wouldn't give you the right to copy images of MM from later works (http://www.trojanhorseantiques.com/PTheApprenticesDream.jpg) still in copyright.

In that respect, Steamboat Willie would be no different from any other Public Domain work, from the Bible and Shakespeare to Frank Capra's Meet John Doe (1941). The latter is one of many films (http://en.wikipedia.org/wiki/List_of_films_in_the_public_domain_in_the_United_States) now in PD, mostly because their copyrights were not renewed back when that was a requirement. And notice how many different versions (http://www.amazon.com/s/ref=nb_ss?url=search-alias%3Ddvd&field-keywords=meet+john+doe+dvd&x=0&y=0)of it are available.

[E-Sabbath]

Lucasfilm was pretty bad once.

The company was the subject of an urban myth stating that it tried to trademark the term "Nazi". This was based on a supplement for the Indiana Jones RPG in which some figures were marked with "NaziTM". This notation was in compliance with the list of trademarked character names supplied by Lucasfilm's legal department[16]. Later references to the error would forget its origin and slowly morph into stories of TSR's trying to register such a trademark, possibly aided by TSR's own reputation late in its existence as a "trademark Nazi" company.


Yep, they claimed they trademarked Nazi.

[gigi]

If companies were as reasonable as that, I would have no problem; however:

Vermonster (http://www.rockartbrewery.com/VERMONSTER.html) was a well-established local beer in Vermont before Monster enegy drink (http://en.wikipedia.org/wiki/Monster_Energy) existed; furthermore, there is no way you could confuse the two logos.


And the Ben & Jerry's Vermonster http://en.wikipedia.org/wiki/Vermonster

[BobLibDem]

If you want to see just how fast lawyers can move, just start up a company, any old company, with "Olympic" in the name.

[FallenAngel]

DMark, you might be right about how the system is supposed to work, but it gets problematic when a company with deep pockets decides to go after anyone who uses the name at all. The Monster cable company is notorious for suing anyone who uses the term "monster" in their product name, no matter how far removed their product is from audio-visual cables. Even if the objects of these suits end up winning, it costs them money and hassle and stress to fight these claims. One recent example was when they went after a company called Monster MiniGolf.

There was an instance here in Arizona several years ago of a mom & pop cafe the owners had named, "Margaritaville." It had been in business for a few years and had a pretty steady clientele.

Some of Jimmy Buffett's people got wind of it and sent a cease and desist order, since JB owns the trademark on the name for his own restaurants and other endeavors.

There was a pretty cool upside, though. Changing all their signage and materials would have cost more than the owners could afford, so Buffett fronted all the costs and even did some kind of promo for them. He said that while he had to protect his trademarks and copyrights, he didn't have to be a jerk about it and hurt someone else who hadn't meant any harm.

[Patty O'Furniture]

Google maps turns up quite a few places named Margaritaville (http://www.urbanspoon.com/u/profile_photos/177904?photo_id=98497). Jimmy's lawyers must be busier than a two-peckered billy goat

I hope the new sign reads:


New Restaurant Name
(Formerly Margaritaville)

[DMark]

There was an instance here in Arizona several years ago of a mom & pop cafe the owners had named, "Margaritaville." It had been in business for a few years and had a pretty steady clientele.

Some of Jimmy Buffett's people got wind of it and sent a cease and desist order, since JB owns the trademark on the name for his own restaurants and other endeavors.

There was a pretty cool upside, though. Changing all their signage and materials would have cost more than the owners could afford, so Buffett fronted all the costs and even did some kind of promo for them. He said that while he had to protect his trademarks and copyrights, he didn't have to be a jerk about it and hurt someone else who hadn't meant any harm.

This is actually a perfect example.
1. Business up and running, but still - the name most likely DID come from Buffet's song.
2. The mom and pop owners probably liked the song and meant no harm.
3. My guess is the lawyers didn't just "find it" - from personal experience, most of those places using a trademarked name are found by local competitors who blow the whistle on the neighboring business! You would be amazed at the number of letters and phone calls that come in from people who have an axe to grind.
4. Once a company knows of a business using their name, they HAVE TO send a cease and desist letter. Not that they particularly care about that small business, but if it can be proven in court that you were aware of someone infringing on your trademark, and you did nothing about it, you are allowing that trademark to lapse. Thus, in this case, if for instance Denny's Restaurant Corp. could prove that Buffet knew about many restaurants with that name and did nothing it, they too could open up a chain of Margaritaville restaurants!
5. Buffet was a class act - by going there and giving an implicit OK (without charging them a licensing fee) he can now say he is aware of that restaurant, and made an exception in this case. He still keeps his trademark, but did a nice thing - trust me, very few large businesses would have gone that extra mile.

Most large companies really hate coming down hard on simple mom and pop businesses who have stolen their name - usually as "fans" - but again, if they don't try to stop them, it leaves the floodgates open and a case could be made that the trademark is now up for grabs.

[Rack-a-Bones]

Didn't Disney sue some guy for having the Cinderella castle tattooed on his back?

[Patty O'Furniture]

That's an amusing example of an ambiguous pronoun :)

If true, then this guy (http://www.odditycentral.com/pics/disneys-biggest-fan.html) could have been in a world of hurt.

George Reiger considers himself Disney’s number one fan and to prove it, he has covered most of his body with over 1,900 Disney tattoos.

I see that he (eventually) got Disney's permission, but he did have 80 tattoos before he did that. And since Disney agreed (with conditions), doesn't that weaken their stranglehold on all of those trademarks?

For some reason, the guy is on his sixth wife.

[Cerowyn]

I see that he (eventually) got Disney's permission, but he did have 80 tattoos before he did that. And since Disney agreed (with conditions), doesn't that weaken their stranglehold on all of those trademarks?Trademarks can be licensed, so they could have signed a license agreement with the be-tattooed guy to let him use them. He could even add a tattoo that said something to the effect of "used under license."

[BigT]

Trademarks can be licensed, so they could have signed a license agreement with the be-tattooed guy to let him use them. He could even add a tattoo that said something to the effect of "used under license."

In fact, I have a feeling that he didn't merely "ask" for permission after his 80th tatoo. He probably found out he could get in a lot of trouble for what he'd already done, and struck a deal.

Just to see if I got it right, in 20 years (or whenever that extension is up) anybody would have been able to use Mickey for any purpose?

I seriously doubt the copyright will end then, either. DIsney has a history of getting it extended.

a thread (http://boards.straightdope.com/sdmb/showthread.php?t=243945) <snipped>

The sound part of that thread was interesting. I took the time to figure out what the patented sounds would sound like. The AOL one is the sound used all the time on TV to indicate an instant message. And the Microsoft one sounds quite similar to the Intel one. I would think that both would have had to be defended.