register a trademark for more power

Business names v trademarks

Features of trademarks

register a trademark for strength in defence

copyright v trademarks

Ok, you have a good film title

The character is likeable

You believe it will sell well

You will be making several pitches for distribution rights

So, you need to control some of the rights to the film

Because copyright does not protect names, have you considered registered trademarks?

Some of the best cartoon, film and book characters are protected by way of registered trademarks

If the character or title is already registered before making the pitch, it shows you are more confident about prospects for commercialisation

With a registered trademark, your bargaining position is stronger

A registered trademark can you a bigger say in royalties, licensing, distribution, and merchandising.

When you have your cartoon or character registered as a trademark, it can be very powerful protection - but it is worthwhile checking out registered trademarks. This applies to characters, titles, books, films, cartoons, and television shows.

Once upon a time, "Winnie The Pooh" was born as a story character in the books of A. Milne. It became part of the Disney group. It was turned into a significant asset, through successful marketing. Over time it became one of the highly successful, high yielding, and high earning characters in the Disney stable.

What did Disney Enterprises Inc do to protect "Winnie the Pooh"? They protected the character in a number of ways including the following: -

• They registered the trademark "WINNIE THE POOH",
• They protected the trademark for the territories involved, for example, the USA and the European Community;
• They registered the trademark for certain goods/services that could be marketed.
• So, they protected it well through trademark registration.

So that's how you protect a book title, film title, tv show or cartoon character. ... By letting us apply to get your book, film, television or cartoon names or characters registered as a registered trademark for you.

A common mistake that many people can make is to assume that business name registration or company name registration provides this sort of protection. Such people often find out too late that this is of little or no use for protecting trademarks. The purpose of business name registration, in most jurisdictions, is to merely identify where a business is operating from. This is to help customers and governmental bodies such as local authorities to identify the trading address of the the business name. Business name registration, and company registration, is very different from owning a registered trademark.

In contrast, the purpose of trademark registration is to obtain an exclusive right, and to associate the source of origin with the quality of goods or services provided. A registered trademark gives its owner a property right and a monopoly, that can cover several countries when it becomes registered there, and that covers certain goods and services. Business name registration and company registration does not obtain such rights. The much more powerful and valuable thing to hold or own is the registered trademark.

A business in Ireland that produced children's story books, sought to have one of its characters registered as a trademark. That character was called "PIGGLEY POOH". The "Pooh" name was already registered as a trademark for certain goods and services as part of the "Winnie The Pooh" family name. The proprietors of "PIGGLEY POOH" sought to get their name registered also. This contributed towards bringing about the "battle of the Pooh's".

The battle of the Pooh's arose, and some of the factors involved in the battle included the following :-

• Who held priority in the Pooh name,
• for what territories did the Pooh monopoly rights attach to?,
• what goods and services did the Pooh trademark hold exclusivity for?, and
• was there a likelihood of confusion between Winnie the Pooh and Piggley Pooh as trademarks?, or between the customers buying the goods/services?.
• So, what happened?.

Well it seems that all hell broke loose. Disney Enterprises objected to the registration of the Piggley Pooh trademark, and filed formal trademark opposition proceedings. Why ... this was regarded as an invasion of the "POOH" good name and reputation, and trademark infringement. Character theft was alleged. An opposition to the trademark registration was lodged. The proprietors of Piggley Pooh refused to budge. They had developed the character from childhood memories and family storytelling. Some of the main issues involved in the trademark battle included:-

• the particular trademark classifications involved,
• the goods/services for which trademark protection already existed,
• the similarity/lack of similarity of the trademarks,
• the priority of earlier trademark registrations,
• registered trademark infringement, remedies and compensation, and
• evidence.

Now, we speculate a little as to how the parties arrived at a happy ending to the battle of the Pooh trademarks. From gathering several pieces of the jigsaw puzzle, it seems that the following may have occurred in arriving at the end of the trademark battle: -

• Piggley Pooh got registered for printed matter - not for films or toys,
• The registered trademark "Piggley Pooh" was surrendered,
• A new trademark "PIGGLEY WINKS" was registered without opposition - including for films and toys.

So the battle of the poohs arrived at an ending. But was it a happy one? It ended after several years engaged in heated argument and trademark opposition. It ended without Piggley Pooh obtaining film rights for the "POOH" family name in the European Union. It ended without the Piggley Pooh owners receiving much compensation - the costs of opposition for the printed matter class were granted to the Piggley Pooh proprietors (a few thousand euro, it is understood).

We leave it to the reader to judge whether it was worthwhile engaging in the battle, or ... whether it was more worthwhile having good registered trademark protection for the goods/services that you are particularly concerned to protect.

To see some other advantages of registered trademarks visit our trademarks features page.

For more information on registered trademarks Visit our trademarks SITE MAP page. For other interesting registered trademark cases, see our trademarks cases page. Once approved by the regulatory authorities, there is a "window-of-opportunity" for a limited period, to use the priority filing date to apply for registration in other countries. For further details of our role as trademark agents visit our trademark agents page.

Once you get your trademark registered, you can use it forever. However, you must use it in trade on a regular basis. The trademark registration can be renewed every 10 years.