SOURCES OF DISPUTE

Although it is more difficult to establish (especially in the fast changing media world), mediated products can be addressed under a larger “trade dress”

concept. Traditional trade dress protects the overall look of a McDonald’s restau-rant versus that of a Hardees. For example, John Deere defended the use of its unique shade of green as part of its trademark (Deere & Co. v. MTD Products, Inc). Special jingles and characters can have the same effect if they are central to the station’s operation or programming. Even if the station does not own the copyright on a jingle, it may have trademark protection. One can easily imagine several songs that brings a specific program to mind.

Disputes over specialty characters are normally associated with radio. For example, a station may build a promotional effort around the made-up charac-19 Legal Issues Surrounding Branding: Branding and the Law

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ter “Jimmy the Frog,” and a competitive station may be kept from creating a deceptively similar character. These characters result in a confusing mix of trade-mark and copyright disputes. David Letterman’s switch from NBC to CBS raised disputes concerning some of his specialty characters. Barney, the children’s program, invited an onslaught of purple dinosaur costumes for children’s parties.

Trademark problems may grow in an era of consolidation and multi-channel broadcasting. Broadcast outlets and audiences will face a dizzying array of program sources. The temptation may be for a station to co-brand a program-ming. For example, if an NBC affiliate co-owns a WB station, the promotions department may be tempted to combine promos. This may make perfect sense to the promotions department and the audience. However, the trademark owners (NBC and WB) may not be so understanding.

19.10 REGISTRATION

The bad news is that trademark registration can be a pain. It is expensive, com-plicated, and time consuming. In the end, you may not get the trademark you wanted. The good news is that full registration is usually not needed for a local television station. Although it offers additional protections and puts possible offenders on notice, it is not needed to defend your rights. As the broadcast market changes, companies should anticipate the day that they will need national registration—just in case.

The first level of protection comes from simply using your trademark in com-merce. A trademark that is used has the upper hand on a trademark that is planned—no matter which was written first. Using your mark gives you common law protection in the geographic area of your station. This means that neither a local nor national company can come into your market to take your mark.

You can register your trademark with your state (or states). The registration may not do you much good, but it does not cost much either. Usually, the state will only check if the identical mark is already registered and add your mark to the database. You may gain certain procedural advantages because it also looks like you’re doing the right thing. State registration may be enough to scare off some competitors or impress a judge. In a tough case, however, it does not mean much.

You can get a strong national protection from federal registration with the U.S. Patents and Trademarks Office. Registration can put others on notice that the mark belongs to you. It increases penalties and gives some international pro-19.10 Registration

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tection and Internet protection. You may also register an “intent to use” for a trademark up to 3 years in advance.

Federal registration can also be expensive. The process can easily take more than a year and cost thousands. You must perform your own search for anyone else using your mark. An overlooked contender to your mark can send you back to the beginning at any time. Professional help is a necessity. Despite the risks, national registration can mean a big payoff if you plan to commit to your mark on a national scale.

International protection is for seasoned veterans and well beyond the space allowed here. It could take a minimum of 3 years. Not all countries recognize international protection and fewer enforce it. It is a step that should not be made lightly or without assistance.

19.11 INTERNET

Local television stations are local by nature and technology. The main reason to consider expanded trademark protection is the Internet. This argument has merit but may be simplistic. Putting your product out on the Internet pushes your product from a regional to international market. If you are going to build a campaign, you want to protect your investment. You may also open yourself up as a defendant by going beyond your normal geographic market.

However, thousands of stations face the same dilemma. Some names will be unavailable—Amazon and ESPN Sportzone, for example. Other names may need to be more specific—Lansing’s Eyewitness News. Litigation is likely but so is compromise. Major questions may start when the American ABC faces direct competition from the Australian ABC.

Competition will depend on how you define your market. Are you really going to market to the whole world or just your region (and expatriates)? Many stations run a telephone information service (e.g., time and temperature). It has a potential world-wide audience but not a practical world-wide audience. The Internet can deliver that audience easier, but is that your audience? It comes back to market confusion. Are people going to confuse your Louisiana service with the one from Canada?

A bigger problem is the products you buy. Can you tolerate your syndicated promo package used by 100 other people on the Internet? Can they tolerate you? Do you have the right in your syndication contract to use it online? Con-verting product to the Internet means conCon-verting it to another media. Do you have the right for non-television distribution? The Internet is an intellectual property quagmire because products sold to you were intended for local distri-19 Legal Issues Surrounding Branding: Branding and the Law

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bution. Most syndication contracts were written before the Internet’s explosion of popularity.

Universal resource locators (URLs) have become the center of most disputes on the Internet. These names, most commonly used as Web page and e-mail addresses, are generally allocated on a first-come basis. This has caused WXXX broadcasting to fight with the WXXX corporation for the URL WXXX.com.

Beyond normal disputes, cyber-squatters attempt to claim URLs only to resell them to a corporation. Other entrepreneurs claim similar URLs and misspellings of popular URLs. For example, Viacom.com may need to fight the owner of Vacomm.com (without the “i”). To the extent the second URL appears to be the first, a trademark battle may develop.

Finally, protest sites have developed for many corporations. The URL might be WXXXsucks.com. To a certain extent, these sites have been discour-aged by brand dilution lawsuits. However, attacking protest sites may have a back-lash as the public perceives a rich corporation battling with a poor protester.

Further, trademark law is poorly designed to combat free speech (see next section).