Iconic/”Famous” brands and trademarks/trade names are valuable Intellectual Property. Organizations holding such as marks registered with the U.S. Patent and Trademark Office (USPTO) rightfully guard their marks’ use by third parties. Should a third party desire to use a registered mark, advance written permission is required if that third party is to avoid potential claims of infringement, litigation, and potentially large expenses and damages.
The latest example of this required permission is use of the Boy Scouts’ Eagle rank ribbon and badge, both of which consist of a silver Eagle over red, white and blue striping with the Boy Scout motto “Be Prepared” a part of both. These two similar marks are considered “Design/Fanciful” marks vs. just Word marks, albeit most registrants protect both iterations.
The Boy Scouts national headquarters has come up with a simple permission form would-be users fill out and file. Permission is readily granted when the use is consistent with the Boy Scouts’ mission.
In this latest example, a local bakery initially refused to create Boy Scout Eagle Scout logo icing for a cake to celebrate achieving this highest rank when the icing included the registered Design/Fanciful mark “Eagle Scout.” Once the Eagle Scout candidate secured written permission from the national headquarters to use these marks as icing on a cake, the Scout gave the granted permission to the bakery and it supplied the requested Eagle Scout logo cake. (Attached is a page showing the registered Eagle Scout patch.)
TAKE-AWAYS/LESSONS LEARNED: It is critical for any company being asked to use a trademark or service mark to fill an order from a party obviously not the mark’s registered owner or license to have that customer secure permission from the mark’s owner.
DISCLAIMER: The author does not represent any parties in this or any similarly related current trademark disputes or positions.
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Pellegrin’s BriefCase SM/©
Volume 3, Issue #3, May 2019
Author’s Background: ADVERTISING MATERIAL. John Pellegrin, Esq. maintains a robust business law and management consulting practice. Areas of expertise include IP/IT, transactional and business succession planning, communications, various government agencies (FCC, FTC, USPTO, Copyright Office, FDA, and EPA), nonprofits, and wills/trusts/estates. He is admitted to practice before the U.S. Supreme Court, New York, District of Columbia, and Virginia.
Caveats: Nothing contained in Pellegrin’s BriefCase should be taken as the last word on any given subject discussed nor relied upon as legal advice. Rather, the author’s comments on emerging trends and prescient decisions in the law and government regulations/interpretations/policies are meant to make the reader more aware of developing issues, opportunities and risks.
Legal and Business Consulting Services. We view our role as counsel being essentially to “define the scope of the risk” for our clients. John also serves as Of Counsel to the law firm of Allred, Bacon, Halfhill & Young, PLC, as well as being actively involved in several community-based organizations. These include serving as Chairman/At Large Commissioner on the Fairfax County Small Business Commission; Rotary Club of West Springfield; COR (Chartering Organization Representative) to a local Boy Scout Troop & Cub Pack; National Eagle Scout Association; IFSR; MVLE, Inc.; various Chambers of Commerce; MEPC (McLean Estate Planning Council), and the Purveyors Club. He has been recognized and honored with several awards over his lengthy legal career and for his community involvement, including a communications Golden Receiver Award, Community Champion Awards, and Distinguished Service Award (Rotary International).
The author may be reached at 703.250.1595 (office); 703.598.0380 (mobile); or jp@lawpell.com. Website: www.lawpell.com Twitter: @lawpell
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