Topic: interesting article about white outs

[ru4mu2]

White Out copycats
Penn State fans using Coyotes tradition at football games
Bob Young
The Arizona Republic
Oct. 16, 2007 12:00 AM

The Coyotes haven't gotten much use lately out of their "White Out" tradition of filling their arena with white-clad fans for the playoffs.

But that doesn't mean they're going to stand by without a fight and let anybody else take it.

It seems that Penn State has developed a similar tradition, designating some important games as "White Outs."
 
 
 


And last season, the school had a student contest to design an official "White Out" T-shirt to be sold for a game.

Trouble is, the Coyotes have trademark rights to the term "White Out." The club registered the term even before moving from Winnipeg, Manitoba, to Phoenix and has reapplied when necessary to keep it up to date.

Last year, the team informed Penn State in writing that it would allow the "White Out" promotion only once.

"They signed a document acknowledging that they were in violation," said Jeff Holbrook, a Coyotes' executive vice president and the team's chief communications officer.

"They had done all the marketing and merchandising, and we didn't want to ruin the day for their fans. They asked us to give us a one-time exception, and we said, 'Sure. Go ahead.'

"We thought it was a dead issue and that they would live up to the terms of the agreement."

However, Penn State declared another "White Out" this season for a game against Notre Dame, declaring Beaver Stadium the "White House."

The T-shirt contest didn't allow the term "White Out" to be included in the design this year, but the game was billed as a "White Out."

Greg Myford, the associate athletic director of marking at Penn State, told the school's paper, the Daily Collegian, that officials have applied to protect a similar phrase: "Penn State White Out."

Talk about an end-around.

"They're certainly using it in violation," Holbrook said.

"We're not on a 'White Out' witch hunt, but there's a reason people register trademarks," he added.

Steve Weinreich, a Coyotes' vice president and the team's general counsel, told the Daily Collegian recently that any variation of the "White Out" term for marketing purposes is a violation.

It isn't unusual for teams, coaches or athletes to secure the rights to marketing slogans.


• Miami Heat coach Pat Riley once registered the term "Three-peat" when he was coach of the Los Angeles Lakers.


• Ring announcer Michael Buffer has the trademark on "Let's get ready to rumble." In fact, Holbrook said NHL clubs used to use that at the start of games but now must pay Buffer if they use it.


• The Seattle Seahawks and Texas A&M wrangled over the "12th Man" in a lawsuit last year. The Seahawks now pay a licensing fee to A&M to use it.


• And first baseman Tony Clark registered "Anybody, anytime" this season after he coined it and it became the motto of the Diamondbacks.

The Coyotes' tradition began when the club was in Winnipeg and officials asked fans to wear all white in a 1987 playoff game against Calgary in response to the Flames' "Sea of Red."

Penn State has a big game Oct. 27 against top-ranked Ohio State. It's an 8 p.m. Eastern time start for ESPN. So maybe they can call it "White Night" and avoid trouble.

Anyway, Holbrook wouldn't say what the club's next step might be but hinted that he believes it can be cleared up through back channels.

"We're not trying to make a huge issue out of this," he said. "We're hoping they'll live up to the agreement."

[andy4theherd]

wow, what a bunch a freakin tools...

i think i am gonna copywrite the term "dumb %&*^# idiot" that way, when someone says something stupid they have to pay me... or maybe just the word "game". i could make a lot of money...

[Olen]

wow, what a bunch a freakin tools...

i think i am gonna copywrite the term "dumb %&*^# idiot" that way, when someone says something stupid they have to pay me... or maybe just the word "game". i could make a lot of money...

*WARNING - DON'T READ IF YOU DON'T LIKE LEGAL TALK*

(1) "WHITEOUT" trademark -- look for the parties to reach an agreement, aka Seattle and Texas A&M.  Short of that, it wouldn't surprise me if PSU files a cancellation proceeding at the USPTO to cancel the registered mark "WHITEOUT" based on descriptiveness, genericism and / or extensive prior usage.  

(2) Don't take the article too much to heart - there are legal issues and concepts not explained in the article, therefore it is incomplete and misleading.  Most reporters do not understand the difference between the various forms of intellectual property, and so there are assumptions that are made stemming from that which the reporter might be familiar (which is usually copyright law).  

Here is an example of what is incomplete and misleading:  the topic concerns trademarks.  Trademarks identify the source of a good or service, and protect the trademark owner from competitors or free-riders that attempt to use marks that are confusingly similar to the owner's mark.  But take note -- the competitor / free-rider must be making a "commercial use" of the allegedly infringing mark; if the use is "noncommercial" (a use not intended to "compete" with the good / service associated with the mark), then liability is minimal, at best.  

A newspaper writing about "WHITEOUT" and the variations would not be liable for trademark infringement for several reasons, including the fact that the newspaper is not using the mark in a commercially competitive nature.

Other uses not considered trademark infringement (aka defenses to trademark infringement) -- parody; non-trade usage; "nominative fair use" (unrelated to copyright's "fair use" defense).

Another example of incomplete info from the article- in the case of Michael Buffer's "Let's get ready to rumble" mark - there are generally only two instances where a party might end up "paying" Buffer for using the phrase:

(a) if there is a licensing agreement between Buffer and the other party indicating such; or

(b) if Buffer chooses to sue (or threaten to sue) the other party for trademark / trade dress infringement and / or dilution of the mark - the threat of suit might force a licensing deal or settlement; a suit might generate a determination of infringement and/or dilution and a quantum of monetary damages for Buffer.

The article leaves one with the impression that Party X is free to use another's mark so long as Party X pays an undisclosed fee to an undisclosed entity at some point in the future.  This is only true if there is a licensing agreement (pre or post action).  Party X is considered an infringer, but the trademark owner must exercise its right to exclude others from using and demonstrate a claim of damages based on the commercially competitive usage of the allegedly infringing party.  One doesn't just pay money to the "trademark monitors".  

Conversely, copyright does have such an analog -- performing rights societies (ASCAP and BMI in the US), which enter and enforce licensing agreements between its artists and radio and television (predominantly - the net is becoming enveloped as well), collecting fees and then distributing the fees based on a formula to its artists.  Trademark owners have no such vehicle.

(3) I know andy is being facetious - and it might be funny to see such a phrase protected in some way - but the USPTO would not register, and the state would not register, a mark that possesses a word akin to an obscenity; and, one cannot copyright short phrases or titles.  As much as many of us might want see that on a bumper sticker or t-shirt, duly protected, you would not have the "monopoly" power to stop competitors.  Sorry.   :razz:

[andy4theherd]

:lol:

that stinks, i was preparing the paper-work for my "eat $hit and die" bumper stickers...

 :lol:

[Olen]

:lol:

that stinks, i was preparing the paper-work for my "eat $hit and die" bumper stickers...

 :lol:

We can file it -- but it probably won't generate the desired result.   :razz:

But, as a business model, nothing to stop you.   :lol:

[banker]

Hey Olen, how does this tie back to the only thing us old guys think about when we hear the term White Out (it's a typewriter thing, you college guys wouldn't understand)?  I'm sure that the company that produced the product had the name registered at some point.

[Olen]

Hey Olen, how does this tie back to the only thing us old guys think about when we hear the term White Out (it's a typewriter thing, you college guys wouldn't understand)?  I'm sure that the company that produced the product had the name registered at some point.

"WITE-OUT" (or as most normal folks would recognize it - Wite-Out (circle R)) is a registered trademark now owned by BIC.  The trademark has been in use since 1966, and was registered with the USPTO in 1974, and is still an active registration.  It is registered in the International Class 016, which is for paper goods and printed materials, generally, and b/c this is "correction fluid", it is generally considered a related good and included within the class description umbrella.

It appears as though your question may be whether BIC could prevent the use of "WHITEOUT" or similar sounding variants - if so, the answer is probably not.  Since BIC's use and the use of sports teams are really aimed at two entirely different goods / services, with little likelihood of overlap and cross-channeling in trade, and little likelihood of actual confusion, then I would suggest that there is little to no likelihood of confusion (likelihood of confusion is the legal standard).  

If I answered the wrong question, let me know.  

 :lol: