Discussion:
What is the name of your state?state-RI
I have a publisher telling me not to use the word ADVENTURES in my title of my music books, because they own the trademark. However, it is a typed drawing and my word looks nothing like theirs. Not even close. Different fonts, colors, sizes.
Their info is:
Word Mark
ADVENTURES
Goods and Services
IC 016. US 002 005 022 023 029 037 038 050. G & S: Printed music books, sheet music, printed instructional, educational teaching materials in the fields of piano playing and piano music. FIRST USE: 19930702. FIRST USE IN COMMERCE: 19930702
Mark Drawing Code
(1) TYPED DRAWING
Registration Number: 2412377
Mark (words only): ADVENTURES
Standard Character claim: No
Now, if I understand correctly, the standard character claim being NO means that they do not "own" the word ADVENTURES, only their stylistic interpretation (sp?) of the word. So, they can only enforce a ceise and desist if I were using the same colors, font, style etc and theirs. Correct?
Thanks for any help!
I am a small sole-proprietor and they are a large company.
Answer:
They are idiots.
Answer:
Not so fast.
Answer:
Not so fast. I know but I thought DIV was going to be the one to jump on this and explain it to the poster.
Damn, that means I have to type more.
O.K. Jazz, to make sure they have no claim to YOUR style of the word 'ADVERNTURES' you would need to take both to a copyright attorney and let him/her give you an opinion as to the status of any claim such as confusion in the styles and/or representations.
It's not JUST about the font, color and style but about how it is presented in the context of the useage.
Answer:
I know but I thought DIV was going to be the one to jump on this and explain it to the poster.
Damn, that means I have to type more.
O.K. Jazz, to make sure they have no claim to YOUR style of the word 'ADVERNTURES' you would need to take both to a copyright attorney and let him/her give you an opinion as to the status of any claim such as confusion in the styles and/or representations.
It's not JUST about the font, color and style but about how it is presented in the context of the useage. **A: hint- federally registered tradename/trademark.
Answer:
thanks guys.
I also forgot to say that I am not using these titles more than another 6-12 months.
Their title is Piano Adventures
My title is First Adventures in Jazz and More Adventures in Jazz.
I believe that the word Adventures is a weak mark. I do not think that the word Adventures gives any descriptive elements to either book. There should be no confusion because my title clearly states JAZZ. They do no publish jazz books.
they also asked me not to use the word piano as a keyword on my website. HA! Who the He** do they think that they are fooling?
they do not have my Adventures as a drawing mark. their mark is a very fancy ADVENTURES in a stylized script.
I can't really afford an attorney. We have been in letter contact and now we are on round 2 of letters.
I am thinking of sending them a letter back stating that they do not have a standard character claim on the word Adventures and my word Adventures looks nothing like theirs. As far as the word adventures and piano as a keyword, well, they have no claim so it is a non issue in my book.
Thoughts anyone?
THANKS A LOT FOR YOUR HELP!!!!
Answer:
Are you going to be discussing the ll-V-l chord progression commonly used in jazz?
Answer:
HA!
I do that on another site JazzPianoLessons.com
So.. I mean't to really ask.
Am I correct about the Standard Charater Claim? Is it true that they do not own the word ADVENTURES, just their style of the use?
Answer:
also, I know that the courts look at other use as well.
I have come across at least 20 other titles from MAJOR publishers that use the word Adventures in their title. Some of them even use Adventures and Piano.
So, I think that it is clear that it is not a word that distinguishes a title. The consumer, as stated bt the PTMO, gets a "general" overview of a product. As long as it is not confusing to the consumer, it should be ok.
I am so sick of companies trying to stop people from using what is not theirs! I mean, come on, saying that I can't use the word piano or adventures as keywords on my website is rediculous. BTW, their website does not have the keyword piano in it! Ha!
Answer:
Now, if I understand correctly, the standard character claim being NO means that they do not "own" the word ADVENTURES, only their stylistic interpretation (sp?) of the word. Correct.
So, they can only enforce a ceise and desist if I were using the same colors, font, style etc and theirs. Correct? Not correct. They can send a cease-and-desist letter to anyone they want. Enforcement can only be done through the courts -- so if they want to "enforce" their rights, they'll need to sue you for infringement.
Beyond that, you don't have to be using the same font, style, color, etc., as they are to be infringing -- the test is "likelihood of confusion," not "exactly the same" -- and whether a usage is "likely to confuse" is a question for the courts to decide based on all of the facts presented.
I am a small sole-proprietor and they are a large company. Not relevant.
I also forgot to say that I am not using these titles more than another 6-12 months. Also not relevant. You could stop using it today, but that doesn't mean that they could go after you for infringement that has already occured.
I believe that the word Adventures is a weak mark. I do not think that the word Adventures gives any descriptive elements to either book. There should be no confusion because my title clearly states JAZZ. They do no publish jazz books. "Likelihood of confusion" is a multipart (9 part? I can't remember exactly right now) test -- similarity of the marks is one (albeit important) part of the test, and if your marks are truely different, that is something that swings the balance in your favor. The use of the word "Jazz" may also swing the balance in your favor. However, there are a number of other parts of the test, such as the "sophistication of the likely consumer" and "similarity of goods" that probably don't work in your favor. So, your "belief" that they have a weak mark or that there is no confusion is not a slam-dunk -- there are a lot of factors to consider.
they also asked me not to use the word piano as a keyword on my website. HA! Who the He** do they think that they are fooling? Thye probably have a much weaker case here, but again, it is not a slam-dunk in your favor...
I can't really afford an attorney. We have been in letter contact and now we are on round 2 of letters.
I am thinking of sending them a letter back stating that they do not have a standard character claim on the word Adventures and my word Adventures looks nothing like theirs. As far as the word adventures and piano as a keyword, well, they have no claim so it is a non issue in my book.
Thoughts anyone? Well, sending letters back and forth and being obstinate is fine, and hopefully you'll be able to work something out. However, sticking to your guns may also result in them filing a lawsuit against you which, win or lose, will require you to shell out the $$$ for an attorney, so you would be well advised to figure out a way to resolve this amicably.
I have come across at least 20 other titles from MAJOR publishers that use the word Adventures in their title. Some of them even use Adventures and Piano. And how do you know they aren't trying to enforce their mark against them as well?
So, I think that it is clear that it is not a word that distinguishes a title. The consumer, as stated bt the PTMO, gets a "general" overview of a product. As long as it is not confusing to the consumer, it should be ok. And that is true. The problem here is that the fact that there is no confusion is your version of the story -- they undoubtedly have a different one. You may be right -- but it's a court that gets to make the final decision here if you can't resolve this in some other way.
I am so sick of companies trying to stop people from using what is not theirs! I mean, come on, saying that I can't use the word piano or adventures as keywords on my website is rediculous. I agree that companies using their IP to push around others is not cool. However, you have to realize that trademark rights are not merely "use 'em or lose 'em," but they are "use 'em and protect them vigorously or lose 'em." A trademark holder is obligated to enforce their mark, or they will lose the protection the mark gives them. Again, not to be disrespectful, but we only have your side of the story, and maybe they feel (rightly or wrongly) that they have a strong claim. Or maybe they don't. That's why we have a court system.
Again, I would strongly advise you (as other have) to talk with an attorney -- if you can't, or won't, then you should do what you can to try and resolve this without going to court.
EDIT: One more thing I forgot to add in this (already too long) reply -- you are putting too much emphasis on the registered mark. Yes, the registered mark limits them to their stylized version of the word "Adventures" -- however, if this does go to court, they could try and prove to the court that they have ALSO acquired common-law trademark rights to the word itself, at least within their field of commerce. IF they can prove that, then they can enforce their mark against the use of the word itself, in addition to the stylized version -- and that's why I said the use of the word in the website may not be a slam-dunk in your favor. They may not have the right to prevent you from using the word under the registration, but they may be able to enforce a common-law mark if they can prove to the court that one exists.
Answer:
thank you so much for the info. Right now I am conversing with a business manager, not an attorney. I feel as though they are wrong, but I do not want to go to court to prove my case either.
I know that you have only heard my side of the story. I appreciate they they have a different side of the story. Many points I did not include here for time and space. One of those is that I met the author of the books and we have started a relationship. Rather than them coming to me with this problem, they send me a very impersonal and nasty letter, throwing in everything but the kitchen sink.
I also know that they need to fight for their trademark or they will lose it. We are in a small community of music publishers. It is unfortunate that they decided to take this route.
Anyway, thanks for the help!!
Answer:
I should have also noted that I have been using my title before they registered their mark. I have been using it even before their filing date. Well, anyway, I'll try to solve it amicably.
Thanks agian for the detailed help. It has been great!