February 17, 2012 / 11:09 PM / in 6 years

Carlynsanity - one reporter's quest for a trademark

NEW YORK (Reuters) - The 23-year-old New York Knicks star Jeremy Lin has become not only a sports legend but a major business opportunity for everyone who can come up with a pun on his name.

A customer looks at a Jeremy Lin shirt in a Modell's store in New York's Times Square February 16, 2012. REUTERS/Brendan McDermid

According to the U.S. Patent and Trademark Office’s online database, at least two people have applied for the name “Linsanity” for athletic apparel. Another wants a trademark for “Linsane.”

All this got me thinking.

If everyone else is trying to get in on the Linsanity, why not me? I’ve already got Lyn, the crucial syllable, in my favor. How about “Carlynsanity”? Who knows, maybe one day it could be worth something.

The only thing I need now is a trademark.

Applying for the legal rights to a name involves registering with the U.S. Patent and Trademark Office. I go on to its website, find the trademark database and type in “Carlynsanity.”

Joyous news: Nothing comes up. Another search tells me there is one active trademark for “Carlyn,” covering bathroom fixtures.

Because U.S. law requires that all trademarks be associated with “goods and services,” applicants must submit documents attesting that they already have goods or services in the marketplace, or that they have plans to make and sell something. “The touchstone for a trademark is its use in commerce,” says intellectual property lawyer David Donahue with Fross Zelnick Lehrman & Zissu.

While the office doesn’t track how many names have been trademarked, the practice is in vogue with some celebrities. Last year Sarah Palin was granted a trademark on her name for “educational and entertainment services,” such as motivational speaking services. And in January, music stars Jay-Z and Beyonce applied to trademark the name of their newborn daughter, Blue Ivy Carter, for 15 categories of merchandise, including Blue Ivy Carter “paper baby bibs,” “baby carriers worn on the body,” and basketballs.

Well, I bake a mean banana bread. Maybe the world is ready for “Carlynsanity” banana bread.

Back to the Patent and Trademark Office’s online application system, which now tells me to pick a category for my trademark. I go with “staple foods,” covering coffee, tea and pastries and confections, and click to the subcategory “bread and buns.” According to the site, an application costs $325 per category. It seems not worth another $325 to cover Carlynsanity loaf pans, so I stick with “bread and buns.”

To get rights to something that’s not already in the marketplace, an applicant needs an “intent-to-use trademark.” That involves sending the Patent and Trademark office a “specimen” of said banana bread. It doesn’t mean an actual slice; just a photo will do, intellectual-property lawyers tell me.

If I decide to go forward, a randomly-assigned trademark examiner will research whether my proposed trademark is similar to other trademarks for the same or similar goods. (Full disclosure: my brother is an examiner for the Patent and Trademark Office, but he reviews biotechnology patents, not trademarks for baked goods). The average wait time for the agent’s initial review is about three months, according to the office.

The process then is fairly routine. After approval by the examiner, trademark registrations are posted in the Official Gazette for trademarks, which is published online every Tuesday and gives any citizen, inventor, competitive baker or basketball player an opportunity to oppose the registration. (Warning: if you do, no banana bread for you.)

Then I just have to hope nobody challenges my trademark. If someone materializes and feels that the new trademark creates confusion or overlaps with an existing one, that person could bring a case either at the Patent and Trademark Office or before a federal judge and jury, who can grant damages if they determine infringement has occurred.

“The sine qua non of trademark law is confusion,” says Dale Cendali, an intellectual property litigator at Kirkland & Ellis.

Would “Carlynsanity” banana bread present a problem for the holders of the “Carlyn” bathroom fixtures trademark? A representative for Decolav, the Deerfield Beach, Florida, company that owns that trademark for “lavatories, sinks,” couldn’t be reached for comment.

The bigger question is whether Jeremy Lin (or the Knicks) could challenge me. According to lawyer Cendali, if Lin or his proxies get a trademark for selling Linsanity basketballs, and mine is for Carlynsanity banana bread, my trademark is still likely to hold up because the products aren’t “confusingly similar.”

Adds Cendali: “The issue is whether you would be trying to create a false association with Jeremy Lin.” A Knicks spokeswoman didn’t respond to a request for comment.

Reporting By Carlyn Kolker; Editing by Amy Stevens and Claudia Parsons

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