Look Before You Leap - Recent Case Demonstrates the Importance of Careful Trademark Selection

Posted on May 23, 2008 by Jennifer Slonaker

The federal court in the Northern District of Georgia recently held that Wal-Mart’s yellow smiley face is not a protectable trademark.  Smith v. Wal-Mart Stores, Inc., 537 F.Supp.2d 1302, (N.D. Ga. 2008). Specifically, the Court held that trademark protection could not be afforded to Wal-Mart’s yellow smiley face, because Wal-Mart failed to show that the public recognizes the yellow smiley face as a designation of Wal-Mart’s products or services. The Court made this finding even though Wal-Mart has been using the yellow smiley face to promote its good and services for many years and has invested substantial resources and years of effort in marketing it goods and services with the yellow smiley face.        

Because Wal-Mart’s yellow smiley face was held not to be a protectable trademark, Wal-Mart is unable to prevent others from using a yellow smiley face identical to or similar to Wal-Mart’s to promote their goods and services. In other words, Wal-Mart invested substantial resources and years of effort in promoting and developing a trademark in which it basically has no legal rights.

Because the first step in any company’s marketing campaign is to select a trademark that consumers will associate with the company’s reputation and goods and services, this case emphasizes the importance of taking the necessary steps to properly select your trademark at the early stages of your marketing campaign. Legal counsel can play a vital role in advising you on the relative strengths and weaknesses of your trademark. By having a search performed and discussing your trademark selection with legal counsel, you will be able to ascertain the scope of legal rights that may be afforded by your trademark before expending a great deal of time and resources in developing and promoting the trademark.

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BSA - The Software Police

Posted on April 2, 2007 by Kendra McGuire

If you have never heard of the Business Software Alliance (“BSA”), consider yourself lucky. Then consider yourself uninformed. For those of you who have not had the pleasure of hearing from BSA, the Business Software Alliance was formed in the late 1980’s by software companies, including Microsoft and Apple, in order to watchdog business compliance with software licenses. 

BSA is rumored to get most of its leads from disgruntled employees who are only too happy to turn in their former employers. And let’s face it, while software compliance is typically a priority for companies, managing licensing compliance and achieving licensing compliance is a challenge.

If BSA knocks on your door, hold on to your wallet! From all accounts, BSA is interested in settling issues, but seemingly minor instances of non-compliance can result in significant fines. BSA knows that the threat of litigation and the cost associated with it is often enough to force cooperation from targeted companies.

If your company is targeted by BSA, you will typically receive a letter asking you to conduct an internal audit of your software and software licenses. Before doing so, you should consider contacting competent counsel who will assist you with the audit. Don’t waive or give up opportunities afforded under the attorney client privilege or the work product doctrine by conducting the audit yourself. There are other protections afforded to you that competent counsel can assist you with.

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