Akoo International, a social music television network, has filed suit against T.I. and his A.K.O.O. Clothing label which T.I says means ‘A King of One Self’ over an alleged trademark infringement.
The suit filed in the United States District Court for the Northern District of Illinois alleges “Akoo” is a trademark of Akoo International and has been for several years prior to T.I launching his line. The case has been pending in court since March of this year. Let’s get into what a suit alleging trademark infringement means. My coverage here will be a bit more in depth because I want it to serve as a future reference on trademark suits for our talk here on the blog.
First, who cares? What’s the point of Trademark?
- Lawmakers saw a need to protect you and I, the public, from confusion. For example, how many times have you seen someone carry a Louis Vuitton (LV) bag. You probably thought “Oh LV! Isn’t that what rap and pop songs are made of?” It turns out the LV bag, when you speak with the owner, is “fake.” We don’t want that kind of public confusion because it is bad for business, for all involved. See Louis Vuitton vs. New York Chinatown Counterfeits.
- Second, why should another business steal your customers or get a free ride off your hard work and good reputation? Raise your cyber hands if you remember the case of Victoria Secret v. Victor’s Little Secret. How confusing was the name Victor’s Little Secret, especially since their product offerings also included lingerie? Geeweez! Some people.
For fashion and entertainment brands, especially fashion brands, trademark is one of the most important if not the most important asset of your business. You want to have your brand trademarked. Indeed as of December 2009, the US Customs and Border Protection and U.S. Immigration and Customs Enforcement reported that in fiscal year 2009 they made 14,841 seizures of counterfeit and pirated goods with a total domestic value of $260.7 million. Crazy isn’t it! Now that you understand what the real deal is, let’s do the legal talk on TM.
What is a Trademark ™?
It is any word, phrase, logo symbol, color or sound that is used by a company to identify products or services in the marketplace. TM can be your business name that you use to sell your product and services as well as your product or service name.
What is a Service mark?
It’s the mark you use to market your service. It’s used interchangeably to mean TM.
How do you create a TM?
Just use your trade name, i.e. the name you use to the public, to identify your products or services for sale. So for example, G Unit, Rocca Wear, Ladybrille, Target, Essence, Vogue, you get the drift.
Do I have to register my TM?
No. There is no registration requirement. HOWEVER, it enhances your rights when you seek enforcement against an infringer. Also, if you are the first to use your TM, then you can stop others from subsequently using your mark, a.k.a. “infringe on your trademark” as the Akoo International v. TI matter I opened this article with.
How Do I Register my TM?
File or complete application with the US Patent and Trademark Office. You can also hire an attorney to do it for you.
What If I intend to Use it but I am not Ready?
No big deal. All you have to do is file an intent to use [ITU] TM registration application with the US Patent and Trademark Office. You’ll need to file another application once it is in actual use and of course pay applicable fees.
Are there instances where I own my TM but I am unable to prevent others from using it?
Because TM gives varying degrees of protection to TM owner, depending on the situation.
How Do I get Maximum TM protection for my brand?
The question you must answer is whether your mark qualifies for TM protection? If yes, how much?
Here is the breakdown/analysis:
- Is your mark a strong or weak mark? Distinctive business names receive the strongest legal trademark protection. For example. Gucci, GAP. They make strong connections in the minds of customers and play a big role in their buying choices. The more distinctive a name, the more likely it is that customers will be less confused by more than one business using the name.
- What if my name is Ordinary? You might want to adopt an African name like mine ASAP! On a more serious note, the law says ordinary and descriptive names receive less or no protection. Why? Because they are weak!
What are examples of weak TM names?
- Ordinary or descriptive words
- Personal names. NOTE: Personal names with use can become stronger e.g. Marc Jacobs.
What are examples of strong distinctive TM?
They are marks that clearly separate the products or services they represent from others. For example, GAP =clothes
How can I make my weak TM grow stronger?
Keep using it.
To be clear, could you list instances where I cannot register or receive TM protection
- Non-use or abandonment: After 3yrs its presumed abandoned!
- Generics & genericide: The word “Fashion” is generic but there are many brands Gucci, Prada, Miu, Miu. Why not grant TM to “fashion?” If protection is granted to “fashion” one company would have a monopoly and could stop all others from using the name of the goods.
- Confusingly similar marks: The “Likelihood of confusion,” prevents you from registration and claim of TM.
- Weak mark
- marks that are primarily surnames
Do I need a TM notice?
No. It is common for you to see “TM” when word, logo, symbol or phrase is being TM or application has not been filed. Upon completion, registration and actual issuance, then the mark now carries the ® symbol.
Do I need to register my TM to enforce my rights in court?
How do the courts determine consumer confusion?
The courts ask: are there similarities of the conflicting marks in appearance, sound, meaning? E.g. Red Threads Designs v Red Treds Designs.
- Do the products or services actually conflict? Ford Modeling agency v Ford Motors. If not, then both can exist.
- What is the strength of the mark?If it is strong, it stays in consumer’s mind. If weak and confuses consumers, you will still not receive TM protection.
That’s it from me, for now, on trademark.
Fashionentlaw™ is the brainchild of Uduak Oduok (Ms. Uduak), an ex-fashion model and industry veteran turned Fashion and Entertainment lawyer. The law blog discusses hot topics in pop culture arising primarily out of the fashion industry.
As a legal practitioner, Ms. Uduak has seventeen years of experience counseling individuals and businesses within and outside the creative community. She has counseled designers, apparel manufacturers, models, photographers, retailers, graphic designers, musicians, public relations specialists, and athletes, among others, on diverse legal issues including business formation, licensing, trademark and copyright matters, contracts, intellectual property and contract disputes.
To arrange a consultation to discuss your case, contact her today at 916-361-6506 or email (firstname.lastname@example.org).