On April 30, 2007, Mirage Studios Inc. filed a lawsuit against MIB Ninja Entertainment located in Pittsburgh's South Side (which has since moved from that location). Mirage Studios Inc., owner of the Trademark for the Teenage Mutant Ninja Turtles, a popular comic book turned cartoon turned movie franchise, claims that by painting a mural on the side of its building featuring a variation of the popular characters MIB is using the Turtle characters for advertising purposes without permission.
Milton Barr, who had operated the store, stated that under the First Amendment he had the right to paint whatever he wanted as long as he did not make money by doing it. Paul Beck, a Pittsburgh Trademark Attorney who has spent his career helping businesses obtain and enforce Trademark Registrations, disagrees.
"Trademarks are a badge, flag or symbol which represents the source of the product or service that is associated with it," Beck explains. "You can infringe without making money. You can damage the goodwill if you are offering a product or service that is similar and of less quality than the person's product or service who owns the mark."
Barr also stated that he believes under trademark laws he is allowed to use a variation of the images as long as they are fifteen percent different from the originals.
"Fifteen percent is not a factor. The test is likelihood of confusion, which is the belief that the people using the trademark are sponsored by, affiliated with or the same as the owner of the trademark," explains Beck.
Similarity to well-known trademarks often creates confusion with consumers, which may lead them to purchase goods or services that are not what they expected or wanted. Eat'n Park Hospitality Group of Homestead and EPR Holdings of Wilmington, Delaware are currently suing Forget-Me-Knot Gifts of Edgewater, New Jersey for the sale of cookies similar to Eat'n Park's famous "Smiley Face" cookies. Eat'n Park claims that the New Jersey cookie will confuse consumers because it features a smiley face similar to the "Smiley Face" cookie. Eat'n Park has had a Trademark Registration for its "Smiley Face" cookie since 1987.
So what does a business need to know when navigating the world of trademarks?
"The most important element to a trademark is its strength," Beck explains. "The strongest trademarks are coined words like 'Kodak', a fanciful word, one that's made up or one that's in the dictionary but is used in an arbitrary way."
Attorney Beck emphasizes that when businesses are choosing a trademark they should avoid using descriptive words. "Descriptive trademarks are more likely to have someone else adopt them because they are descriptive," Beck continues.
Beck also advises businesses to keep in mind that "you do not have to exclusive right to use the trademark in connection with everything." A Trademark Registration only gives the owner the exclusive right to use the Trademark in connection with the goods and services listed in the Registration. This may mean that another business can use an existing trademark or part of an existing trademark in connection with its own goods and services that are very different from those in the Registration.
"With the advent of the internet people are innocently infringing trademarks," continues Beck. Businesses should conduct a search to make sure the desired trademark or a similar trademark isn't already being used in the same field. To help in this search there are numerous companies that will conduct a search on words and images, though no search can guarantee that no one else is using the same mark in the same field.
Beck concludes that one cannot obtain and keep a trademark registration without using the trademark in the regular course of business and that it should be used continuously and consistently.
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