10 ms·

I may be wrong, but legally Coca-Cola had to protect the slogan, otherwise they would lose the copyright, no? The "our advertising will help you" defense doesn

I may be wrong, but legally Coca-Cola had to protect the slogan, otherwise they would lose the copyright, no? The "our advertising will help you" defense doesn't hold up in court. Can any lawyers confirm?

drcube 13y ago
No, you have to defend trademarks, or else eventually lose them. Was "It's the real thing" trademarked? And furthermore, trademarks are only usually enforced among competitors. Apple Computer can't sue Apple Dry Cleaning for trademark infringement. Well they can, and occasionally do, but it isn't a given that they will win. Usually you have to show damages, and Apple Computer isn't damaged in any way by having a dry cleaner use the name of a popular fruit. Similarly, I don't think Coca-Cola lost anything by having the phrase "it's the real thing" associated with a literary work. My question for the lawyers: Does a letter like this count as "defending a trademark"? Or would Coca-Cola have had to actually take these publishers to court over it?
- joezydeco 13y ago
  uspto.gov trademark search shows: Word Mark IT'S THE REAL THING Owner (REGISTRANT) The Coca-Cola Company CORPORATION DELAWARE ONE COCA COLA PLAZA Atlanta GEORGIA 30313 Registration Date December 7, 2004 Goods and Services IC 032. US 045 046 048. G & S: Non-alcoholic beverages, namely, soft drinks [ ; syrups, concentrates and powders for making beverages, namely, soft drinks]. FIRST USE: 19421231. FIRST USE IN COMMERCE: 19421231 The registration/renewal date is no use, but the first use date shows 12/31/1942. Just as Coca-Cola asserts in their letter.
  - coldtea 13y ago
    That should be disallowed -- a company owning english phrases like "it's the real thing" or "just do it". If it was up to me, I would allow only for trademarks in synthetic, non-english words. E.g "Soylent" or "Pepsi" or "McBurger". Not for actual english words ("Windows") or phrases.
    - zokier 13y ago
      Trademarks are limited in scope. Note how in the parent comment the phrase is trademarked in relation to "Non-alcoholic beverages, namely, soft drinks [ ; syrups, concentrates and powders for making beverages, namely, soft drinks]. " You should be able to use the phrase outside that context. Of course you might have fun time in court defending that right.
    - joezydeco 13y ago
      I believe that is why a classification also needs to be attached to the application (e.g. "Non-alcoholic beverages, namely, soft drinks"). While Coke may be asserting they own the trademark for "It's the Real Thing", they're being a little oblique with the fact that they only have it for soft drinks and not printed publications. So it seems Coke is trying to bully the publisher when the publisher seems to know that they are in a different classification. They are pretty much saying this in a sarcastic way in their reply.
    - tehwalrus 13y ago
      As others have said, it's within limited scope. cf: "Lies: and Lying Liars Who Tell Them (A Fair and Balanced look at the right)" http://www.amazon.com/Lies-Lying-Liars-Tell-Them/dp/0452285216 http://www.amazon.com/Lies-Lying-Liars-Tell-Them/dp/04522852... - was sued by Fox News because they own "Fair and Balanced." The suit was thrown out, because it's selling a book, not the news.
    - dsr_ 13y ago
      Read more carefully. CC owns the use of that phrase ONLY in terms of describing non-alcoholic beverages and beverage mixes. I suppose a court might find that using it to describe, say, bourbon, would be an infringing use, even though CC does not claim alcoholic beverages. More so if the packaging or flavor was intended to mimic a cola. But you could market your new line of toilet paper or watches or hippo-hide whips as The Real Thing, and Coke would have no more of a leg to stand on than they did with the book publisher. It's also appropriate to note that the company claiming the trademark must actually use it reasonably often -- you can't claim "Softer than a cloud" for your waterbeds and then not use it for some number of years. That one will be trickier, though.
    - 13y ago
  - a-priori 13y ago
    Right, clearly they do have the trademark on the phrase. But the mark is limited in scope to things related to "Non-alcoholic beverages, namely, soft drinks [ ; syrups, concentrates and powders for making beverages, namely, soft drinks]". So they have no right to enforce it in reference to a book or book advertisement, as they tried to do here.
    - nickff 13y ago
      To be clear, they registered its use for "Non-alcoholic beverages, namely, soft drinks [ ; syrups, concentrates and powders for making beverages, namely, soft drinks]", but they can still claim someone is violating a non-registered trademark.
- ben010783 13y ago
  Using Apple Computer as an example is funny because it's similar to what happened when Apple Corps sued Apple Computer for trademark infringement (http://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer http://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer). I don't understand how a computer company would harm the holding company for the biggest band to ever exist, but this fight went on for over two decades.
  - krallja 13y ago
    Until this fight was resolved, The Beatles were not on iTunes. Steve Jobs was a huge fan of The Beatles.
rmc 13y ago
You have to defend trademarks not copyright. If copyright had similar restrictions (and I wish it did!), you would be able to get away with copying a copyrighted DVD on the grounds that it was copied a lot.
- deleted 13y ago
  [deleted]
- throwaway2048 13y ago
  getting a bit offtopic here, but the doctrine of laches means you have to actively persue many legal rights, including copyright, or after a length of time, you will not be eligible for remedy. http://en.wikipedia.org/wiki/Laches_(equity) http://en.wikipedia.org/wiki/Laches_(equity) This is a strong legal basis for abandoned works infact being safely usable. If somebody sleeps on their rights for 10/20/30 etc years, and the waits for a big payday to act, its not equitable and in good faith.
  - Vivtek 13y ago
    Wish that one applied to patents.
    - throwaway2048 13y ago
      It may infact be, unsure if its ever been tried as a defense.
    - rmc 13y ago
      Well patents only last about 20 years normally (compared to copyright lasting many times long), so it's less of an issue. I agree that it should apply to patents aswell.
lutusp 13y ago
IANAL, but I know this issue. To protect an advertising slogan, the plaintiff must show that other uses of their slogan will confuse the public and materially injure the plaintiff's interests. For example, there was once a restaurant named "McDonald's", owned by someone named McDonald. The restaurant existed before there was a McDonald's chain of restaurants, and the restaurant name corresponded with the owner's name. Notwithstanding all that, the corporate giant McDonald's was able to force the owner of the restaurant to change the name on the ground that the original name would mislead the public. EDIT: I researched this further, and it turns out there have been several "McDonald's" restaurants that came to the attention of the corporate giant -- some legal actions succeeded, some failed: http://en.wikipedia.org/wiki/McDonald's_legal_cases http://en.wikipedia.org/wiki/McDonald's_legal_cases Defenses of everyday phrases like "It's the real thing" can only succeed if the plaintiff can show there is a real probability of public confusion or injury to commerce or reputation -- it's not enough to say that the phrase is in wide use. A counterexample is Apple Computer and Apple Music (the latter owned by the Beatles). In this case it was decided that, because they were in different businesses, there was no great likelihood of public confusion.
- zokier 13y ago
  > In this case it was decided that, because they were in different businesses, there was no great likelihood of public confusion Until iTunes was released.
  - krallja 13y ago
    iPod (2001) came out before iTunes. The original Macintosh (1984) had very powerful sound hardware for the time.
- drcube 13y ago
  > A counterexample is Apple Computer and Apple Music (the latter owned by the Beatles). In this case it was decided that, because they were in different businesses, there was no great likelihood of public confusion. That's a bad example because Apple Computer eventually did enter the music business, with itunes, contrary to an earlier court's ruling that they stay out of that industry. I think they ended up just paying Apple Music a ton of money. So that's basically a case of infringing trademark, but having enough money to pay off the company whose mark you're infringing. As we all know, enough money solves any problem.
PhasmaFelis 13y ago
True or not, I don't consider "the law says I have to" a valid excuse for acting like an asshole. Corporate goons love to sanctimoniously declare that they have no choice but to be selfish fucks, but they sure aren't using any of their billions of dollars of lobbyist money to get the law changed.
- 300bps 13y ago
  Does the law even need to be changed though? Their duty is to pursue non-licensed use of their trademark. Could they not grant the innocent book seller in this case a non-transferable license for a specific purpose for a paltry sum? They would then reserve the right to pursue non-licensed infringement of the trademark.
- mathattack 13y ago
  In the case of trademarks, if it's a valid complaint (and this one clearly isn't) and you choose not to prosecute, you have a weaker case the next time. So if McDonalds sees someone open up a McDonny's with similar menu items, they have to go after the trademark infringement. Otherwise they have no case when Burger King pulls the same stunt.

drcube 13y ago

No, you have to defend trademarks, or else eventually lose them. Was "It's the real thing" trademarked? And furthermore, trademarks are only usually enforced among competitors. Apple Computer can't sue Apple Dry Cleaning for trademark infringement. Well they can, and occasionally do, but it isn't a given that they will win. Usually you have to show damages, and Apple Computer isn't damaged in any way by having a dry cleaner use the name of a popular fruit. Similarly, I don't think Coca-Cola lost anything by having the phrase "it's the real thing" associated with a literary work. My question for the lawyers: Does a letter like this count as "defending a trademark"? Or would Coca-Cola have had to actually take these publishers to court over it?

joezydeco 13y ago
uspto.gov trademark search shows: Word Mark IT'S THE REAL THING Owner (REGISTRANT) The Coca-Cola Company CORPORATION DELAWARE ONE COCA COLA PLAZA Atlanta GEORGIA 30313 Registration Date December 7, 2004 Goods and Services IC 032. US 045 046 048. G & S: Non-alcoholic beverages, namely, soft drinks [ ; syrups, concentrates and powders for making beverages, namely, soft drinks]. FIRST USE: 19421231. FIRST USE IN COMMERCE: 19421231 The registration/renewal date is no use, but the first use date shows 12/31/1942. Just as Coca-Cola asserts in their letter.
- coldtea 13y ago
  That should be disallowed -- a company owning english phrases like "it's the real thing" or "just do it". If it was up to me, I would allow only for trademarks in synthetic, non-english words. E.g "Soylent" or "Pepsi" or "McBurger". Not for actual english words ("Windows") or phrases.
  - zokier 13y ago
    Trademarks are limited in scope. Note how in the parent comment the phrase is trademarked in relation to "Non-alcoholic beverages, namely, soft drinks [ ; syrups, concentrates and powders for making beverages, namely, soft drinks]. " You should be able to use the phrase outside that context. Of course you might have fun time in court defending that right.
  - joezydeco 13y ago
    I believe that is why a classification also needs to be attached to the application (e.g. "Non-alcoholic beverages, namely, soft drinks"). While Coke may be asserting they own the trademark for "It's the Real Thing", they're being a little oblique with the fact that they only have it for soft drinks and not printed publications. So it seems Coke is trying to bully the publisher when the publisher seems to know that they are in a different classification. They are pretty much saying this in a sarcastic way in their reply.
  - tehwalrus 13y ago
    As others have said, it's within limited scope. cf: "Lies: and Lying Liars Who Tell Them (A Fair and Balanced look at the right)" http://www.amazon.com/Lies-Lying-Liars-Tell-Them/dp/0452285216 http://www.amazon.com/Lies-Lying-Liars-Tell-Them/dp/04522852... - was sued by Fox News because they own "Fair and Balanced." The suit was thrown out, because it's selling a book, not the news.
  - dsr_ 13y ago
    Read more carefully. CC owns the use of that phrase ONLY in terms of describing non-alcoholic beverages and beverage mixes. I suppose a court might find that using it to describe, say, bourbon, would be an infringing use, even though CC does not claim alcoholic beverages. More so if the packaging or flavor was intended to mimic a cola. But you could market your new line of toilet paper or watches or hippo-hide whips as The Real Thing, and Coke would have no more of a leg to stand on than they did with the book publisher. It's also appropriate to note that the company claiming the trademark must actually use it reasonably often -- you can't claim "Softer than a cloud" for your waterbeds and then not use it for some number of years. That one will be trickier, though.
  - 13y ago
- a-priori 13y ago
  Right, clearly they do have the trademark on the phrase. But the mark is limited in scope to things related to "Non-alcoholic beverages, namely, soft drinks [ ; syrups, concentrates and powders for making beverages, namely, soft drinks]". So they have no right to enforce it in reference to a book or book advertisement, as they tried to do here.
  - nickff 13y ago
    To be clear, they registered its use for "Non-alcoholic beverages, namely, soft drinks [ ; syrups, concentrates and powders for making beverages, namely, soft drinks]", but they can still claim someone is violating a non-registered trademark.
ben010783 13y ago
Using Apple Computer as an example is funny because it's similar to what happened when Apple Corps sued Apple Computer for trademark infringement (http://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer http://en.wikipedia.org/wiki/Apple_Corps_v_Apple_Computer). I don't understand how a computer company would harm the holding company for the biggest band to ever exist, but this fight went on for over two decades.
- krallja 13y ago
  Until this fight was resolved, The Beatles were not on iTunes. Steve Jobs was a huge fan of The Beatles.

rmc 13y ago

You have to defend trademarks not copyright. If copyright had similar restrictions (and I wish it did!), you would be able to get away with copying a copyrighted DVD on the grounds that it was copied a lot.

deleted 13y ago
[deleted]
throwaway2048 13y ago
getting a bit offtopic here, but the doctrine of laches means you have to actively persue many legal rights, including copyright, or after a length of time, you will not be eligible for remedy. http://en.wikipedia.org/wiki/Laches_(equity) http://en.wikipedia.org/wiki/Laches_(equity) This is a strong legal basis for abandoned works infact being safely usable. If somebody sleeps on their rights for 10/20/30 etc years, and the waits for a big payday to act, its not equitable and in good faith.
- Vivtek 13y ago
  Wish that one applied to patents.
  - throwaway2048 13y ago
    It may infact be, unsure if its ever been tried as a defense.
  - rmc 13y ago
    Well patents only last about 20 years normally (compared to copyright lasting many times long), so it's less of an issue. I agree that it should apply to patents aswell.

lutusp 13y ago

IANAL, but I know this issue. To protect an advertising slogan, the plaintiff must show that other uses of their slogan will confuse the public and materially injure the plaintiff's interests. For example, there was once a restaurant named "McDonald's", owned by someone named McDonald. The restaurant existed before there was a McDonald's chain of restaurants, and the restaurant name corresponded with the owner's name. Notwithstanding all that, the corporate giant McDonald's was able to force the owner of the restaurant to change the name on the ground that the original name would mislead the public. EDIT: I researched this further, and it turns out there have been several "McDonald's" restaurants that came to the attention of the corporate giant -- some legal actions succeeded, some failed: http://en.wikipedia.org/wiki/McDonald's_legal_cases http://en.wikipedia.org/wiki/McDonald's_legal_cases Defenses of everyday phrases like "It's the real thing" can only succeed if the plaintiff can show there is a real probability of public confusion or injury to commerce or reputation -- it's not enough to say that the phrase is in wide use. A counterexample is Apple Computer and Apple Music (the latter owned by the Beatles). In this case it was decided that, because they were in different businesses, there was no great likelihood of public confusion.

zokier 13y ago
> In this case it was decided that, because they were in different businesses, there was no great likelihood of public confusion Until iTunes was released.
- krallja 13y ago
  iPod (2001) came out before iTunes. The original Macintosh (1984) had very powerful sound hardware for the time.
drcube 13y ago
> A counterexample is Apple Computer and Apple Music (the latter owned by the Beatles). In this case it was decided that, because they were in different businesses, there was no great likelihood of public confusion. That's a bad example because Apple Computer eventually did enter the music business, with itunes, contrary to an earlier court's ruling that they stay out of that industry. I think they ended up just paying Apple Music a ton of money. So that's basically a case of infringing trademark, but having enough money to pay off the company whose mark you're infringing. As we all know, enough money solves any problem.

PhasmaFelis 13y ago

True or not, I don't consider "the law says I have to" a valid excuse for acting like an asshole. Corporate goons love to sanctimoniously declare that they have no choice but to be selfish fucks, but they sure aren't using any of their billions of dollars of lobbyist money to get the law changed.

300bps 13y ago
Does the law even need to be changed though? Their duty is to pursue non-licensed use of their trademark. Could they not grant the innocent book seller in this case a non-transferable license for a specific purpose for a paltry sum? They would then reserve the right to pursue non-licensed infringement of the trademark.
mathattack 13y ago
In the case of trademarks, if it's a valid complaint (and this one clearly isn't) and you choose not to prosecute, you have a weaker case the next time. So if McDonalds sees someone open up a McDonny's with similar menu items, they have to go after the trademark infringement. Otherwise they have no case when Burger King pulls the same stunt.