My TV shows name is being used on a local print publication! Do I have any rights?

[jasonn123]

What is the name of your state (only U.S. law)? NY

Hello,
I created a local TV show about 4 years ago. The TV show is broadcast locally as paid programming on 3 major networks. (ABC, FOX, and The CW)

I have not officially registered for a TM. Although, each show I produced i have used a 2015 copyright symbol and stated "all rights reserved" in the credits of the show. On the TV show's website I have a TM symbol next to the show's title and on the bottom on the site it state that the show's name is a TM of the company. This is an implied Trademark/Copyright.

That said, a local Free news paper (pennysaver) has recently used my TV show's name as an editorial heading, it has a section within the weekly printed paper. There is a full section on their website as well.. There's a very good chance they have heard of my TV show and still used it's name as it is a somewhat general name which implies community involvement...

Do have I any rights to ask them to stop using my TV show's name in their weekly free publication??

Thanks in advance for any thoughts on this matter!

Best, Jason

 

[quincy]

What is the name of your state (only U.S. law)? NY

Hello,
I created a local TV show about 4 years ago. The TV show is broadcast locally as paid programming on 3 major networks. (ABC, FOX, and The CW)

I have not officially registered for a TM. Although, each show I produced i have used a 2015 copyright symbol and stated "all rights reserved" in the credits of the show. On the TV show's website I have a TM symbol next to the show's title and on the bottom on the site it state that the show's name is a TM of the company. This is an implied Trademark/Copyright.

That said, a local Free news paper (pennysaver) has recently used my TV show's name as an editorial heading, it has a section within the weekly printed paper. There is a full section on their website as well.. There's a very good chance they have heard of my TV show and still used it's name as it is a somewhat general name which implies community involvement...

Do have I any rights to ask them to stop using my TV show's name in their weekly free publication??

Thanks in advance for any thoughts on this matter!

Best, Jason

First, the ® symbol and "Reg. U.S. Pat. Off" are both reserved for registered trademarks (those marks placed on either the USPTO's Supplemental or Principal Register). You cannot use the symbol or that phrase next to your show's name if you have not registered your show's name with the United States Patent and Trademark Office.

The copyright symbol (©) does not have a similar restriction. It can be used to indicate that an original and creative work belongs to the author of the work.

Neither copyrights nor trademarks NEED to be registered to claim rights in creative and original works or in company, product or service identifiers. Registration just provides additional protection and makes the registrant eligible for additional damages should either the copyrighted work or the trademark be infringed.

It is possible that you could enforce your rights in the name of your show. If consumers are confused by the dual use of the name - the use by you for your show and by the newspaper for its editorial heading - then you might have a legitimate complaint. A lot depends on the specific facts, however - the exact name that is being used to identify each, if there is evidence of consumer confusion or consumer confusion is likely, the damages suffered.

We cannot do personal reviews on this forum, so you would have to have your trademark and the use of the same one by the newspaper looked at by a trademark professional in your area. The lawyer you see might recommend you send to the newspaper a cease and desist letter, claiming infringement on your rights.

Good luck.

 

[FlyingRon]

I don't see where he's claimed registration (by using either the circle-R or other notation). He says he put TM on it. That doesn't require registration, just his assertion that the item is intended to be a trademark.

Copyright is immaterial by the way. Copyright doesn't protect names/titles.

Absent knowing just what your title is and how it is used by you and the paper would indicate whether you have any chance of prevailing in an infringement suit. Just because there was a TV Show "Happy Days" doesn't preclude someone from using that title elsewhere.

Of course, writing cease and desist letters costs very little. The downside is that they may just be tossed without action.

 

[quincy]

I don't see where he's claimed registration (by using either the circle-R or other notation). He says he put TM on it. That doesn't require registration, just his assertion that the item is intended to be a trademark.

jasonn13 says he is using a trademark "symbol" ("I have a TM symbol next to the show's title ..."). The most commonly known "symbol" for a trademark is ®. If he is using this, he shouldn't be.

The Lanham Act prohibits use of this symbol unless or until the trademark is registered with the USPTO - and then, once registered, the regular use of the symbol is important from a damages standpoint. If he is using "TM" next to his title, however, that is okay (although it is not necessary). It is the use in commerce of the title as an identifier that confers rights.

Copyright is immaterial by the way. Copyright doesn't protect names/titles.

Copyright protects the content of his shows and the fact that he is using "© 2015 All Rights Reserved" with his credits is fine. It indicates the TV shows are copyright-protected. The copyright symbol, even though it does not have to be used, if often used to show ownership. You are correct that it does not protect names or titles. Names and titles can potentially be protected under trademark law.

Absent knowing just what your title is and how it is used by you and the paper would indicate whether you have any chance of prevailing in an infringement suit. Just because there was a TV Show "Happy Days" doesn't preclude someone from using that title elsewhere.

Of course, writing cease and desist letters costs very little. The downside is that they may just be tossed without action.

I agree that the fact someone is using a name as a trademark does not necessarily preclude others from using the same name. Facts matter.

Because trademark holders need to protect their marks from use by others or potentially lose all rights to the mark, however, sending a cease and desist letter can be the easiest and cheapest way for the trademark holder to inform another user that the mark is being used as a trademark and for the trademark holder to assert their rights and claim ownership in the mark. It can be an effective way to stop an infringing use.

If someone's use is not infringing, of course, the C&D can be ignored without too much risk of a lawsuit following - but it would be smart for the user of another's trademark to make sure of their legal position before tossing the notification and going on their merry way.

 

[FlyingRon]

jasonn13 says he is using a trademark "symbol" ("I have a TM symbol next to the show's title ..."). The most commonly known "symbol" for a trademark is �. If he is using this, he shouldn't be.

A TM symbol would to me be ™.

 

[quincy]

A TM symbol would to me be ™.

If that is what he is using, that is okay. Not necessary, but okay.