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Indiana Intellectual Property Blog

~ Trademark and Copyright Law Updates in Indiana

Indiana Intellectual Property Blog

Category Archives: Intellectual Property

Five Trademark Concerns When Rebranding

29 Monday Aug 2011

Posted by Kenan Farrell in Branding, Indianapolis, Intellectual Property, Trademark

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Indianapolis Power & Light, Indianapolis Public Library

Indianapolis’ library (formerly known as the Indianapolis-Marion County Public Library) has decided to rebrand itself, dropping “Marion County” from the name. With the Indy metropolitan area growing to fill just about all of Marion County, the new, shorter name makes sense from a marketing perspective. It was reportedly focus-group tested over the last year and the decision made based on how people most often reference the library.

From a trademark perspective, however, the Library’s rebrand raises a few concerns that should be instructive to all entities considering a switch to a new name or logo:

1. At a bare minimum, do a Google search for similar trademarks (and acronyms if applicable) already in use.

Focus groups are a nice touch if you’ve got the budget, but a Google search is free. There is no other Indianapolis Public Library and thus little concern about confusion with the name itself (other than self-imposed confusion from using multiple marks…see below). However, the acronym “IPL” is already widely known locally to refer to Indianapolis Power & Light, our town’s other source of enlightenment. Whether the focus group was asked about acronym association is unknown. Either way, we’ll see whether Indy is big enough for two IPLs.

2. Claim your domain name(s), Facebook, Twitter, YouTube, etc. BEFORE you announce the rebrand.

Make sure you’re not focus-grouping your company into real world relevance at the expense of online oblivion. Domain names and social media handles are valuable and that value needs to be accounted for in the decision to rebrand. Here is IPL’s current suite of Twitter accounts:

Of the four IMCPL accounts, only the “readers” equivalent is available for IPL. The other three are claimed, one certified:

I won’t belabor the point by expanding on other social media platforms (The Library has facebook.com/IMCPL and the Indian Premier League has /IPL) but all of them should be proactively addressed in a rebranding effort. Obviously different handles can be chosen but that puts you one step further away from reconnecting with existing fans/followers. Also consider all of the broken links that will be created when you drop your old accounts. Consider how you’ll effectively communicate the rebrand to your existing followers. To smooth the transition, a successful rebrand needs to be accompanied by a continuous monitoring of the old mark and online properties. Congrats, you now have twice as much trademark enforcement responsibility.

If you don’t claim your accounts before rebranding, you’re leaving them out there for cyberprofiteers who can quickly and easily grab them and then demand a king’s ransom. “First come, first served” is the name of the game for most social media platforms, regardless of trademark rights.

3. If you’re going to rebrand, then REBRAND!

Due to budget constraints, IPL officials are introducing the new name and logo in a piecemeal fashion as materials are needed rather than a wholesale change all at once. The descriptive nature of the trademark may help prevent customer confusion, but using two brands at once is typically a sure-fire way to confuse your own customers. Once you’ve decided to rebrand, be swift and decisive.

See what’s going on below? Someone obviously went in to add the new logo but didn’t change the Page Name, About or General Information. Budget is no excuse for that. Instead, it winds up looking to an outsider like an entity that can’t get their trademark straight. If you can’t get your trademark right, don’t expect others to do so. Also, as discussed above, notice the Library is still tied to facebook.com/imcpl and probably always will be as Facebook doesn’t allow simple username switches. That or start from scratch and lose all prior content and those 3,736 followers.

4. Always use a proper trademark notice (“TM” for common law rights).

This is the same advice as for any entity with a trademark they want to protect. In the excitement of the rebrand, don’t overlook sound trademark practices.

5. When budget permits (ballpark $800-$1200), seek federal registration, thus allowing you to use the registration symbol, ®.

Preferably you’d like to file before or shortly after the rebrand. Build the cost of a federal trademark application into your rebrand budget and spare yourself many headaches down the road. Being a geographically descriptive mark, the IML will have trouble obtaining federal registration. However, IPL did register both its name and logo in Indiana. (Those state registration certificates need an update, huh? Todd Rokita?)

Keep these guidelines in mind for your next rebrand. Marketing and trademark concerns should be considered simultaneously if you want to truly evaluate the impact of your new name and logo.

[UPDATE 9/1/11 – For charitable entities, don’t forget to rebrand your Foundation simultaneously with all of the same concerns as above. See images below.]

Social Media Law – Presentation Video

18 Thursday Aug 2011

Posted by Kenan Farrell in Authors, Bloggers, Copyright, Defamation, Intellectual Property, Right of Publicity, Social Media, Tech Developments, Trademark

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Richmond Social Media Group, Whitewater Community Television

Here’s the video from my July 8, 2011 presentation to the Richmond Social Media Group on social media law:

PCCU Presents Richmond Social July 8, 2011 from Richmond Social on Vimeo.

Thanks to PCCU and Whitewater Community Television for your help!

Division of Intellectual Property upon Divorce in Indiana

09 Tuesday Aug 2011

Posted by Kenan Farrell in Indiana, Intellectual Property, Litigation

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Divorce, Intellectual Property

divorceDivorce is a social and legal issue that many people will unfortunately face at some time in their life.  One of the significant concerns for those involved is the effect of a divorce on property distribution among the spouses.  For many of my artist and musician clients, this can be a matter of increased importance, particularly whether divorce law considers intellectual property, including copyrights, as marital property for purposes of dividing property.  The important lesson here is that intellectual property can be a marital asset subject to equitable division in a divorce.

In Indiana, in the absence of a mutual agreement between the spouses, courts will follow state law in dividing property subsequent to granting the divorce.  Property is presumed to be divided equally.  As a general proposition, value created during the marriage should be divided, but any value created before or after the marriage should be excluded.  Of course, in many situations, the current value (i.e. during marriage) of intellectual property is speculative.  Even where an invention or work has been completely created during the marriage, most courts will recognize that time and effort must be spent developing the intellectual property into a source of income. For example, recorded songs may not yet be released or finished paintings may not be sold.  To the extent that this necessary development work is done after the marriage, intellectual property interests are separate property.

When dividing interests in intellectual property, Indiana courts are sensitive to the policies behind patent and copyright law as well as to the policies behind divorce law.  This often means that creative control remains with the inventor/creator spouse.  This result is strongly in both parties’ interests, as it maximizes the future income potential of the creative spouse, thereby making more dollars available for property and support awards.  Indiana courts have wide discretion in their division of property.

Indiana Trademark Litigation Update – Saeilo Enterprises v. Scottwerx

25 Monday Jul 2011

Posted by Kenan Farrell in Indiana, Intellectual Property, Litigation, Southern District of Indiana, Trademark

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Common Law Trademark Infringement, Conversion, Counterfeiting, Debra McVicker Lynch, False Advertising, False Designation of Origin, Forgery, Notice of Removal, State Trademark Infringement, Tanya Walton Pratt, Theft, Trade Dress Infringement, Trademark Dilution, Trademark Infringement, Unfair Competition

Saeilo Enterprises Inc. v. Scottwerx, LLC

Manufacturing company, Saeilo Enterprises, formed the Kahr Arms division in 1994. In 1999, Kahr Arms bought Auto-Ordnance, including the “Tommy Gun” trademark.

Ruger 10/22 Tommy Gun

In June, Saeilo filed a trademark complaint in Hamilton County Superior Court against New York company, Scottwerx.  The complaint claims jurisdiction in Hamilton County “because a substantial part of the events giving rise to the claims alleged herein arose in Hamilton County, Indiana”.

Citing the numerous federal allegations in the original complaint, defendant Scottwerx has filed a Notice of Removal asking the case be moved to Federal court.

Court Case Number: 1:11-cv-00993-TWP-DML
File Date: Tuesday, July 26, 2011
Plaintiff: Saeilo Enterprises Inc.
Plaintiff Counsel: Darlene R. Seymour – Attorney at Law
Defendant: Scottwerx, LLC
Cause: Notice of Removal – Fed. Question: Trademark Infringement, Trademark Dilution, False Designation of Origin or Sponsorship, False Advertising, Trade Dress Infringement, Common Law Trademark Infringement, Unfair Competition, Conversion, Forgery, Counterfeiting, Theft, State Trademark Infringement
Court: Southern District of Indiana
Judge: Judge Tanya Walton Pratt
Referred To: Magistrate Judge Debra McVicker Lynch

Notice of Removal

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Exhibit A: Original Complaint

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Indiana Copyright Litigation Update – BMI v. BerTee’s

15 Friday Jul 2011

Posted by Kenan Farrell in Copyright, Indiana, Intellectual Property, Litigation, Southern District of Indiana

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Copyright Infringement, Mark J. Dinsmore, Tanya Walton Pratt

Broadcast Music Inc. et al v. BerTee’s Inc. et al

BMI has filed yet another copyright infringement complaint against a small town bar.  This time the defendant is Fortville, Indiana bar, BerTee’s Sports Café.

  This case is nearly identical (obviously with different songs and attributed publishing companies) to previous BMI led copyright infringement suits. Links to some of these are here, here and here. Named in the complaint are the following eight songs:

Jerry Williams – Givin’ It Up For Your Love
 Niles Rogers – Good Times
Rick Springfield – Jessie’s Girl
John Cafferty – On the Dark Side
Bradley Kirk Arnold – Kryptonite
Arrested Development – Tennessee
Alex Band – Wherever You Go
John Rzeznik – Name
 

Court Case Number: 1:11-cv-00944-TWP-MJD
File Date: Friday, July 15, 2011
Plaintiff: Broadcast Music Inc., Universal-Songs of Polygram International, Inc., EMI Blackwood Inc., Sony/ATV Songs LLC, The Bernard Edwards Company LLC, Embassy Music Corp., John Cafferty Music, Songs of Universal, Inc., Escatawpa Songs, Arrested Development Music, Careers-BMG Music Publishing Inc., Alex Band Music, Amedeo Music, EMI Virgin Songs, Inc., Full Volume Music, Scrap Metal Music
Plaintiff Counsel: Peter J. Prettyman of Taft Stettinius & Hollister LLP
Defendant: BerTee’s Inc., Kelly D. Kendrick
Cause: Copyright Infringement
Court: Southern District of Indiana
Judge: Judge Tanya Walton Pratt
Referred To: Magistrate Judge Mark J. Dinsmore

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