Shoe Company Discovers That Infringement Can Be Expensive

A discount shoe company lost some big money because of their use of what a Portland court determined to be a protected mark this week.

As soccer players and fans of old school rap already knew, Adidas uses three more or less vertical stripes to represent their products. Collective Brands, Inc., makers of Payless and Stride Rite learned that the hard ($305 million) way.

Read more about the case here.

Companies sue each other all the time, but it's interesting to me that these three lines cost Collective Brands so many millions of dollars. How can somebody register something as simple as a geographic figure?

Trademark law covers much more than words and pictures. Essentially, anything that helps consumers identify a specific service or product is protected. Stephen Elias talks about it in his excellent Trademark: Legal Care for Your Business & Product Name (available at SFPL):

"...[I]t's not just a clever business or product name that pulls in the customers. Equally important in the vast U.S. consumer marketplace are the logos, packaging, innovative product shapes, cartoon characters, website address names (domain names), and unique product characteristics that businesses are using to hawk their wares."

Something as simple as a big yellow "M," a big brown truck, or pink fiberglass insulation can qualify. A mark, unlike a patent or a copyright, doesn't have to be unique to the world; it simply has to be unique as a marketing device for a particular product or service.

I'm going to assume that Collective Brands, Inc., didn't innocently use the vertical stripes, that it never occurred to their designers that the design resembled Adidas'. Trademarks exist so that consumers can reliably identify goods and services from certain providers, so it seems like a legit ruling to me. Anybody else?

Searching for Trademarks: An Annotated Bibliography

A few people have asked recently about what they need to do to register a mark for a prospective business. Aside from shelling out a few hundred bucks, all a person needs to do is to make sure that nobody else is using the mark in the same way.

Here are websites to help you do that, particularly if you live or work in San Francisco:

TESS (Trademark Electronic Search System) comes from the USPTO and contains every trademark currently registered, applications, and many abandoned trademarks from the past. Keep in mind that not all trademarks have to be registered, and those that are registered don't necessarily have to be registered with the Federal government. Keeping that in mind, this will be the largest database of registered trademarks you'll find.

California Business Search If there's a Corporation, Limited Liability Company, or Limited Partnership in California, it's registered here. That means you can use this to see if a business name is in use.

Fictitious Business Search always has a funny ring to it to me, but it's a good resource. Anyone doing business in San Francisco under a name other than their own must register that name with the county. You can access that registry here. This link is for San Francisco, but most counties have a similar database which you can probably find by typing "fictitious business name" and "(your county here)" into Google.

Allmusic Guide If your business is a band, check here and see if anyone's using the name. You may think that you're the only Harmonica Lewinsky out there. And you may be wrong.

D&B Million Dollar Directory and Reference USA (library card required for both) I know, a business name isn't necessarily a trademark. But it's wise to know who else is using a name and what they're using it for before you decide on a business name. That way you're less likely to unknowingly infringe.

Finally, by all means do a Google search of your business or product name. Do several, and get clever with it. Almost everything that is sold is sold or advertised online, so that's actually a pretty useful way to find product names.

This is by no means a comprehensive list, but if you get through all of these steps, the chances of your mark begin unique are pretty good. To perform a very serious search, stop by the library and we'll take a look at state trademarks, business directories, and some product catalogs.

USPTO Trademarks Expo Under Way

The United States Patent and Trademark Office is hosting a Trademark Expo in which they're celebrating the role trademarks play in American commerce and culture. You can read all about it here.
My interest is more in the picture. It's not every day that you see the Under Secretary for Intellectual Property and Director of the U.S. Patent and Trademark Office Jon Dudas sandwiched between Poppin' Fresh and an anthropomorphic Hershey's Kiss.

SF Trademark #2 -- Steam Beer

Marks are used to represent goods or services in a certain market. It's no surprise, then, that a company in a port city (San Francisco, of course) would use a maritime figure to represent its product.

Anchor Brewing registered this symbol in 1984, claiming to have used it in commerce since 1971. The name of their most popular product, "Steam Beer," was also registered in the early 80's, though they claim on their website to have used it in commerce for decades:

Anchor Steam derives its unusual name from the 19th century when "steam" seems to have been a nickname for beer brewed on the West Coast of America under primitive conditions and without ice. The brewing methods of those days are a mystery and, although there are many theories, no one can say with certainty why the word "steam" came to be associated with beer. For many decades Anchor alone has used this quaint name for its unique beer. In modern times, "Steam" has become a trademark of Anchor Brewing.

SF Trademark #1 -- Levi's

Before Levi's jeans were an international icon, they were just one part of a product line that mainly consisted of wholesale fabrics. Initially jeans were work clothes for laborers and cowboys; it wasn't until the 1960's that they became, as Britannica puts it, "internationally a characteristic part of clothing for both men and women."

The Levi's trademark shown above, no. 0250265, was registered in 1927 for overalls and blue jeans. Registration of the name and look of the mark continues today, as does the company's association with San Francisco, where its headquarters are located.

Click here for the Britannica article on blue jeans. (Library card required.)
Click here for the full text of the trademark registration.