Copyright Laws and Intellectual Property Rights

Rally Round the Trade Name

Explain whether or not the fact that Gabby's surname is Rally gives her the right to use it any way she wishes.

The mere fact that Gabby's surname is Rally does not give her the right to use the name in any means of her choosing. A person's name, alone cannot be trademarked. "Personal names (actual names and pseudonyms) of individuals or groups function as marks only if they identify and distinguish the services recited and not merely the individual or group" (United States Patent and Trademark Office, n.d., para. 1). Furthermore, if another company was using the name Rally and had documented a viable trademark claim, that company would have priority use of the mark, despite Gabby's personal connection to the name.

Victor Moseley incorporated his first name into his adult novelty store name, Victor's Little Secret, much to the chagrin of the well-known brand Victoria's Secret. During the 2003 case of Victor's Little Secret vs. Victoria's Secret, Victoria's Secret was forced to prove that the trademark had been diluted causing a monetary loss (Moseley, dba Victor's Little Secret v. V Secret Catalogue, Inc., 2003). After the passing of Trademark Dilution Revision Act of 2006, dilution no longer requires hard proof; the fact that dilution is likely is sufficient for an injunction (GovTrack, 2006). As the requirement of proof of dilution has been lifted for famous brands, Victor can no longer use the name Victor's Little Secret.

Samantha Lundberg, formerly Samantha Bucks can also attest to the fact that a personal name does not guarantee trademark ownership. Sued by Starbucks for trademark infringement for naming her coffee shop Sambucks, the judge ruled that she must eliminate the word Buck's from her business name (Stossel & Goldberg, 2005).

The above cases reference nationally known brands, which have considerably more protection. The Trademark Dilution Revision Act of 2006 was intended to enable the owner's of famous trademarks to maintain the value of their intellectual property. The owner of a non-famous trademark or trade name would have a greater burden of proof.

Explain whether or not it matters that Rally is associated with pizza.

The fact that Rally's Pizza sells pizza and Rally Motors is an auto dealership provides plenty of room for each company to use the word Rally in their business names. The products and services are so very different that it is unlikely a customer is going to be confused and think that he or she could purchase a vehicle from Rally's Pizza. The fact that the phone company has made a few mistakes by giving out the wrong number does not prove that the consumers are confused about the service marks.

If Rally Motors and Rally's Pizza were both nationally used service marks that could be trademarked with the United States Patent and Trademark Office, Rally's Pizza would doubtfully be declined based on the use of the word Rally. "To find a conflict, the marks do not have to be identical and the goods/services do not have to be the same. It may be enough that the marks are similar and the goods/services are related." (United States Patent and Trademark Office, 2010, p. 13). The goods and services provided by these two businesses are in no way related, so as long as sufficient differentiation existed between the company logos, the USPTO would likely approve each of these service marks.

Explain how important the fact is that Herman started to use the name Rally first in that particular geographical area.

The issue of trademark infringement between Herman and Gabby would likely fall under state law as neither company appears to be a national organization conducting business across state lines; therefore, any request for injunction would happen at the state level. If Gabby had opened up an auto dealership and named it Rally's Auto and Rally's Motor had a viable trademark infringement case against her, the fact that he had used the name first in that particular geographical area would be very relevant. A trademark does not require legal documentation or filings to be valid. Usage demonstrated through printed advertisements, product packaging, signage, etc. can be used to show a history of ownership. If the two product offerings were similar Herman's prior use of the name Rally would entitle him to priority over the name.

Explain what rights you have in your trade name.

Your rights to your trade name extend only to the area in which you conduct business. Unless you conduct business across state borders or sell your products on the Internet, you cannot file for trademark protection with the USPTO. If you are qualified to file your trademark with the USPTO, the name must be graphically documented, and the name must include more than just a product service or description. The word(s) must also be sufficiently unique, generic terms cannot be trademarked. A registered trademark includes specification as to the type of goods or services with which the name is associated. The owner's rights do not extend beyond the product or service categories defined by the registration (United States Patent and Trademark Office, 2010).