Can Scouting Group Claim Color Scheme?

Dear Rich: Frontier Girls is a scouting style program founded in 2007 for girls. It has come to my attention that the uniforms I use in Frontier Girls are the same color scheme as a single level of American Heritage Girls, another scouting style program founded 1995. American Heritage Girls has a total of five levels and at one level the uniform is navy bottoms, white shirts, and red vests. It is similar to Frontier Girls except American Heritage Girls also has a navy scarf with their uniform. The badges, awards, and layout of the vests are completely different as is the shape of the vest. [Compare them: American Heritage Girls Tenderheart (scroll down) vs. Frontier Girls.] Their other four levels of uniforms look nothing like Frontier Girls. I have been told that I need to change my uniform, but do not feel that anyone should have the right to trademark the colors red, white and blue, as these stand for our country and any patriotic groups should have a right to use them. Are you being told to change your uniforms, solely on the basis of the color scheme, or are you being told to change on the basis of the overall appearance -- the colors, shape, and design (or what we call trade dress)? There's a difference, as we explain below. In general, the Dear Rich Staff thinks that American Heritage Girls has some challenges ahead if it drags you into court.

• Claiming Color schemes as a trademark is tough.  In order for American Heritage Girls (AHG) to prove that Frontier Girls (FG) infringed solely on the basis of the color scheme, AHG would have to prove that their use preceded FG, that consumers of scouting-style services associate AHG with red, white and blue, that the colors are not functional, and that FG's color scheme is substantially similar to AHG such that consumers are confused when seeing a FG uniform and believe it is AHG. Proving these claims requires substantial evidence -- for example, consumer surveys and expert testimony. We think it will be hard for AHG to claim the color scheme as protectible.
• Trade dress is also tough to protect. AHG may seek to stop FG based on their overall trade dress -- the total appearance of their uniforms (not just the colors). For example companies such as Re/Max and Bank of America go after red, white and blue competitors but usually only if the overall appearance of the signs or marks is similar (not simply the colors). AHG features at least five different uniforms in their program. So it may be a challenge for them to prove that consumers associate any one of the five as a specific source identifier. In addition, as you point out, AHG's blue "neckerchief" distinguishes the AHG uniform, somewhat, from the FG uniform. 
• Bad publicity. It's possible that the potential headlines -- "Scouting Group Claims Exclusive Rights to Red, White and Blue" -- might dissuade AHG from seriously pursuing the claim.
• Dilution, anyone? In addition to claiming infringement, AHG can make a dilution claim regarding the colors if it can prove that red, white and blue comprise a famous mark for AHG and that the colors are not functional. We think that's a tough claim to make as well.

For your FYI Dept. AHG has not registered their trade dress or color scheme. They have only registered their name (claimed for "Educational services, namely, conducting workshops, courses of instruction and day and overnight retreats for girls and young women that support traditional values of God, family and country to promote leadership, social, physical and intellectual development.") And they've been using that mark since 1985. That makes them trademark newbies when compared to the Boy Scouts.

Trademark v. Domain Name: Can We Co-Exist?

Dear Rich, I have a situation similar to one in a previous post. I acquired a unique domain name in 2008 with much trouble. I was planning to build an online store. The name is related to fashion accessories. My website was built in 2009 and it was open to the public. People can see it on the internet but the product and payment part was not done so there was no transactions. But at the same time, I used the same name in a local funding rasing event in California in 2009. I generated some transactions there. I was not able to do too much since then. Two months ago, in June 2011, I found a U.S. software company tried to register a trademark for that exact name for some computer software. I also found that it is online downloadable and it became first in Google listing for that name. My questions are: 1) Will I lose the domain? 2) Can I still apply for trademark? 3) Can we co-exist? The short answers to your questions are No, Yes, and Yes (To save you some time, we've provided an explanation of eCommerce trademark basics.)
A classy distinction. Our big takeaway is that trademark law only protects marks in regard to the class of goods or services being offered under that mark. That's why you can wear American Apparel while you're flying American Airlines, or look for jobs at Monster.com while listening to speakers connected by Monster cables, or fasten Arrow staples to your Arrow shirt. Only those marks that are rock stars in the trademark world --  think Nike or Coca-Cola -- can claim a likelihood of expanding into a broad array of goods and services, and more importantly can prevent another company's use of their famous mark because a third-party use dilutes it.
Domain names and trademarks. A registered trademark owner can only dislodge a domain name holder if the domain name is identical or substantially similar, and the domain name owner acquired or is using the domain name in bad faith. That generally means the domain name holder is exploiting the trademark owner's rights. You won't have that problem because you have a bona fide intent to use the mark for fashion accessories not to compete or trade off the software company's name.

Can Apple Stop Anyone From Using the Term 'App Store?'

Can We Turn Boston Red Sox into Zombies?

Dear Rich: I have come up with a couple of designs that depict the Red Sox baseball team as zombies, and before I start trying to sell them online, there are several points regarding Fair Use as parody that I am concerned about. First, is the use of the team's name at all permissable? My design's currently show the name "Red Sox" in a generic font, but the word "Red" is covered by the word "Undead", changing the term to "Undead Sox". The "Red" is still discernable. Is it necessary for me to remove the "Red" entirely? Second, I use modified versions of two logos. The Red Sox's Hanging Sox logo -- my version is an original drawing that includes a dismembered zombie foot in on of the socks, with several toes poking through a hole in the end of the sock. Also, the MLB logo has been modified to replace the baseball player silhouette with a zombie. Thus, both logos have been modifed from the original so that they are unique but clearly reference the original. Is that protected as parody under fair use laws? Third, I use a modified version of the MLB name. In my artwork, it is altered to read Major League Zombies or MLZ. Again, is this permitted as parody? Short answer dept. If your concept is successful, you'll probably get sued by the MLB. If you can afford to defend the lawsuit, you might win; then again, you might not.
Trademark parodies. What you need to keep in mind is that you're dealing with trademark parodies, not copyright parodies so the copyright concept of "fair use" isn't really relevant (and we're not going to address trademark fair use which is an entirely different animal.) Here's a previous post on the subject and here's a good explanation of the trademark parody rules. Keep in mind that to create a true trademark parody, you must convey contradictory messages: you want people to think of the MLB, but you also want people to see your use as a parody that's not connected with the MLB (Chilling Effects elaborates on that distinction here -- scroll down for the explanation).
Why will you get sued? Famous companies typically sue over parodies under a trademark theory known as dilution. When you dilute, people think less of the mark because you've tarnished its famous reputation. Even if a company believes you have a good free speech defense, the company may proceed with the lawsuit because it has more money to spend on the lawsuit and is more likely to force you into a settlement. If we were to analogize to the world of zombies, the MLB lawyers will want to devour your grey matter.