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Top 5 Legal Issues for Podcasters – Number 2: Trademark Infringement

In this five-part series, we examine each of five potential intellectual property pitfalls podcasters can face and the steps you can take to reduce the likelihood of having one of these issues be the centerpiece of a lawsuit with your podcast’s name on it.

2. Trademark Infringement

A trademark is something that identifies goods or services as coming from a particular source. A trademark can be a word, a logo, a sound, or even a scent. If your podcast has a name, you need to be concerned about whether that name infringes someone else’s trademark rights. Unfortunately, given that trademarks, like copyrights, do not require registration, there is no central repository to determine definitively whether or not the name of your podcast infringes someone else’s trademark. The United States Patent and Trademark Office website contains a definitive list of all federally registered trademarks, but does not include a list of state and common law trademarks.

In the United States, you obtain trademark rights not from filing paperwork, but from actually using the trademark in association with a good or a service. The minute you begin using a trademark (assuming the trademark is not generic or merely descriptive and no one else has superior rights to that trademark), you obtain what are known as “common law” trademark rights. The first person to use the trademark in association with a good or a service in commerce is the “senior” user of the trademark. The senior user has priority over any subsequent, or “junior,” users of that trademark. While common law trademark rights are real and enforceable, they only extend to the actual geographic area into which your trademark has penetrated. It is therefore entirely possible to have two distinct companies, both having valid common law trademark rights to the same trademark in different geographic areas.

One of the many benefits of federal trademark registration is that federal registration extends the owner’s trademark rights to the entire country, regardless of their actual market penetration. However, since a senior user of a trademark has priority over a junior user, even if a junior user obtains a federal trademark registration, a non-registered senior user of the trademark may still have superior trademark rights to the extent of their actual market penetration. As podcasts are rarely geographically restricted however, it is unlikely that the owner of a podcast trademark would not be able to demonstrate use throughout most, if not all, of the country.

It is important to note that not all word are protectable as trademarks. Merely descriptive terms like “red” for apples, or generic terms like “apple” itself are not protectable as trademarks for apples. As a general rule, any words your competition would normally use in its identification or description of its products or services are not protectable as trademarks. Those terms are in public domain and outside the purview of trademark protection. So while “podcasting” may not be protectable as a trademark for podcasting, it may be protectable as a trademark for a board game, or other good or service where podcasting does not have a descriptive or generic connotation. Similarly, while “bananas” would not be a protectable trademark as applied to bananas, it might be protectable as a trademark for podcasting.

Trademarks do not exist in a vacuum. Trademarks only exist in association with their particular goods and/or services. Therefore, if someone has a trademark for “bananas” as used in association with medical syringes, your use of the same exact trademark for your podcast may not infringe the trademark as applied to medical syringes. To figure out whether your use of a particular trademark infringes the rights of another particular trademark owner you must determine the likelihood of confusion. It is not enough to simply change one letter in the trademark, or combine two words into one, you must avoid the likelihood that consumers may assume your podcast is affiliated with the owner of the other trademark. If it is likely that a consumer would be confused by the name of your podcast into thinking that your podcast is affiliated with another business with a similar trademark you may find yourself with a trademark infringement lawsuit on your hands.

To determine is if there is or is not a likelihood of confusion, it is important to examine what are called The Polaroid Factors. The Polaroid Factors act as a guide to help judges and juries determine whether one trademark use infringes another. The Polaroid Factors examine the following eight criteria:

1. the strength of senior mark;
2. the degree of similarity between the two marks;
3. the proximity of the users’ products;
4. the likelihood of the senior user entering the junior user’s market;
5. actual confusion;
6. the junior user’s good faith in adopting its mark;
7. the quality of the junior user’s product; and
8. the sophistication of the buyers.

Determining the extent to which the foregoing factors apply in a particular case can be a daunting task. Moreover, there is no guarantee that every judge and jury will apply the factors in the same way. There is a distinct possibility that one judge or jury could apply the factors differently than another judge or jury and come up with a completely different determination as to whether there has been a trademark infringement or not.

Trademark is a complex area of the law. About the only way to select a non-infringing trademark without going through a trademark lawyer is to pick a long, random alphanumeric string of characters. As long, random alphanumeric strings of characters do not typically roll off the tongue, if you want a memorable trademark for your podcast with a reduced chance of infringing a third-party trademark, it is probably best to go through a trademark lawyer.

A trademark lawyer can conduct a trademark search and give you a legal opinion as to whether the trademark you want for your podcast is likely to infringe anyone else’s trademark rights. While you can search Google and the United States Patent and Trademark Office website for similar trademarks, using these sources to search synonyms and homonyms across different classes of goods and services is difficult and time consuming. Even if you elect to go through a trademark lawyer to obtain a federal trademark registration for your podcast, your registration is still susceptible to attack for the first five years. During that first five years, before your registration is made “incontestable,” it is important to stay alert and bring any accusations of trademark infringement immediately to your trademark attorney.

Be sure to check out the other posts in this Top 5 Legal Issues for Podcasters series:

Number 1: Copyright Infringement
Number 3: Defamation
Number 4: Rights of Privacy and Publicity
Number 5: Patents

Brett Trout

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Posted in Internet Law, Podcasting, social media, Trademark Law.