Scott: From movie titles to podcast logos, trademarks are everywhere in the entertainment industry. But how do you get one and what does it actually protect? I’m Scott Hervey, a partner with the law firm of Weintraub Tobin, and I’m joined today by my partner, Richard Buckley. We are going to talk about the fundamentals of trademark law and why it matters in the entertainment industry on today’s installment of The Briefing.

Richard, welcome back. This is our second installment of our, I guess we’ll call it our Basic Series. It’s not basic, but it is a series on basic issues.

Richard: It’s a great refresher.

Scott: It is. The Refresher Series. I like that. The Refreshing Series. All right. So let’s jump into this here. So let’s start with the definition. What is a trademark? So A trademark is any word, phrase, symbol, or design. It actually even can be a color, and it can also be a noise that identifies and distinguishes the source of goods or services. So think names like Marvel, Pixar, Netflix, or even think the distinctive chime sound from NBC. And let’s not forget the color blue. That is the color of the Tiffany box, right? That’s also a trademark.

Richard: So trademarks are fundamentally about branding. You’re telling consumers where a product or service comes from and preventing confusion in the marketplace. Right.

Scott: So in entertainment, a trademark covers more than you might think. Show titles, well, series titles, production companies, logos, podcast names, podcast series names, even character names in film franchises, they can also be trademarked. If they function as brand identifiers.

Richard: Take, for example, Star Wars. That’s a trademark. So is The Tonight Show. If you’re launching a podcast or a production company, you want to consider protecting your brand as well.

Scott: Let’s talk about what goes into obtaining a trademark. Some people are surprised to learn that you really don’t need to register a trademark to have rights in it. Just by using a mark in commerce, you can establish what’s called Common Law Trademark Rights.

Richard: But registration with the US Patent and Trademark Office gives you several benefits: nationwide protection, presumed ownership, the ability to use that cool symbol, the circle with the R in it, trademark symbol. Also, you have a clearer path to enforcement.

Scott: Yeah. Also, I might add a federal trademark registration is required in order to protect your brand outside of the United States. It is what’s required. Often, also, a federal trademark registration is required if you are dealing with taking down counterfeit merchandise off of B2C sites like Amazon or Etsy or Redbubble. All right, let’s talk about what goes into choosing a trademark and how to avoid choosing a wrong one. One of the biggest mistakes I see is creators falling in love with the name before clearing it. Clearence is about searching to ensure that no one else is already using a confusingly similar mark in your space, your industry, on your same or similar goods or related goods or services.

Richard: It’s important to note that a strong trademark is distinctive. It’s not generic or descriptive. The more unique your name or logo is, the easier it is to protect it.

Scott: That’s right. All right. So once you have a strong trademark, let’s talk about enforcing your rights and dealing with infringement. So trademark infringement is all about likelihood of confusion. What does that mean? Courts will look at whether consumers are likely to believe your product or service comes from or is affiliated with somebody else.

Richard: We’ve seen high-profile disputes like the World wrestling Federation versus the World Wildlife Fund. That’s where the wrestling company, WWF, had to rebrand to WWE, or the Comicon lawsuits between San Diego and Salt Lake over who owns the term.

Scott: Ryan, if you own a mark, you have to police it. That means monitoring for infringing uses, and when necessary, sending the cease and desist letters or taking legal action. And I always counsel my clients, don’t just think that just sending a cease and desist letter is the end of it, because if the other side doesn’t stop, well, you’re faced with the choice of really not doing anything and you’re having your trademark rights erode or spending the money to enforce your rights.

Richard: Right. If you just send a letter and don’t follow up on it to put any teeth of enforcement behind it, then you can get a reputation for just being full of hot air.

Scott: Right. Then no one will pay attention to your cease and desist letters, that’s for No. All right, so let’s talk about some practical takeaways. Here’s what creators should keep in mind. You should always choose a name that’s distinctive and not already in use. Clear the name through trademark searches. You should hire a lawyer to do that. Don’t think you can do it yourself because you really can’t. Consider registering your mark federally. Monitor the marketplace and enforce your rights when needed.

Richard: I think that’s great advice.

Scott: So thanks again to my co-host, Richard. Richard, always great to have your insights. Thank you, our listener, for joining us on The Briefing. If you found this episode helpful or interesting, please take a moment to subscribe, like, and share with your network. We’d also love to hear from you, so leave a comment or a review and let us know what topics you would like us to cover in future episodes. I’m Scott Herbie. I’ll see you next time on The Briefing.