Legal Question in Intellectual Property in California

Re: Combining a generic word with a distinctive word to create a trademark

Your first question would require research to see if the name Tiny Tim is a registered trademark but it is not likely to be registered in the category that you are seeking so you may be alright. There are instances where a trademark in one category can prevent registration in other categories so a full search before filing is suggested.

Regarding the logo, you would not be able to use the character's face/body because that is protected by copyright law. You should create a new face/body that would not be considered substantially similar to that of the character to avoid any problems.

Feel free to contact me if you would like to discuss further.

Re: Combining a generic word with a distinctive word to create a trademark

Caution: remember the purpose of the TM law: to protect against confusingly similar marks so that one person's product is not associated with the other person's product/TM. Example: You probably wouldn't want to name your new mouse trap the Mickey Mouse Trap" because Mickey Mouse is clearly associated with Disney and using the generic word "trap" doesn't change that association. Hope this is helpful.

Re: Combining a generic word with a distinctive word to create a trademark

Unfortunately, the answer really has to be "it depends" There are just too many factors and considerations to give a useful answer until we know what the proposed mark really is (I presume "Tiny Tim's Toolhouse" was merely an illustration or example, and not really the proposed name).

While combining a generic with a distinctive word may form a registrable mark, that's only the tip of the iceberg of legal issues that may arise.

At the very least, you'd need to license the "face/body" for use as part of your logo...

I suggest you consult privately with me or another attorney knowledgeable about such matters for a more comprehensive review of the situation and specific facts.

Re: Combining a generic word with a distinctive word to create a trademark

As much as we attorneys want to tell a client that what they want can and will be done, you would really have been better off talking with an IP attorney before you started deciding what your logo would be because you would actually be safest with a trademark that is novel and only makes viewers think of you. There are ways to do what you want, but it is involved and is not certain of success and even when successful gives you a rather weak trademark. We can assist you with you IP work, but telling you the way it is saves you money.

Re: Combining a generic word with a distinctive word to create a trademark

The only way to determine if a mark is available for use is to conduct a trademark clearance search. There are many companies that offer such services. The one that I typically use charges approx. $500 for a search of Federal, State and Common Law (those who may be using but have not yet registered their mark) records.

Because the test is not whether the marks are identical, but whether there is a "likelihood of confusion," you should have the search reviewed by a trademark attorney to assess the risk of adopting the mark.

If the risk appears acceptable, you can then file an "intent-to-use" trademark application before you even begin use. This is helpful because the U.S., in essence, works on a system based upon priority of use. By filing an Intent to Use application, you can begin accruing priority even though you have not yet used the mark.

Please feel free to contact me if I can be of any assistance.

Re: Combining a generic word with a distinctive word to create a trademark

All of my colleagues' advice is pertinent however it's obvious none have steeped themselves in Dickens' (my favorite author) work (well, maybe they have). All of Dickens' works, as are the illustrations within his original novels, have been in the public domain for many years. You can certainly use any of George Cruikshank's characters, for example, even if someone else has. Just don't use any adaptation by another as that may have copyright protection as to additional material.

To specifically answer your queries, without sounding like the Circumlocution Office, please note:

1. In the case of Dickens' characters, there are no restrictions subject, however, to prior use by another Dickensian devotee (or anyone else). For example, Bill Sykes Bytes is perfectly acceptable assuming no other party is using that or a confusingly similar name. If someone were using that name, using Bill Sykes Programmers might get a trademark office attorney concerned but you could probably convince them otherwise. This is not to say that all fictional names are fair game. Don't even think about James Bond Bytes or Indiana Jones Programmers.

2. So long as the character's depiction dates from the actual novels you're okay. Many versions of Dickens' work, however, have been adorned by contemporary illustrators and they (or their employers or assignees) will likely have exisitng copyright ownership in their work.

3. If by "get started" you mean registering the name and/or logo, see all of my colleagues' advice. Assured that your search has turned up no conflicting names or images, you would fill out the appropriate application at www.uspto.gov and you're on your way.

I stress and repeat prior advice that trademark law can be a minefield, the map of which can be provided by an experienced attorney. As that stupid TV show suggests, 'don't try this at home.' Spend the money and you won't be sorry. Remember Micawber's defining principle (with apologies) "Hire a good lawyer, result happiness. don't hire a lawyer, result misery."

You're welcome to call.