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By *William E. Maguire, Esq. Copyright© 1995 William E. Maguire. All Rights Reserved. BAYWATCH® is a trademark and service mark of The BAYWATCH Production Company andis used here with permission. (as published in Remarks: Trademark News for Business, Vol. 8, No. 2, A Publication of the International Trademark Association)
the first run syndicated television series, has become what has been referred to as, "The Most Popular Television Series In the World." In the U.S., BAYWATCH consistently ranks in the top ten in the weekly Neilsen ratings among other syndicated programs. In many other countries, however, including but not limited to, England, Spain, Germany, Australia, and New Zealand, BAYWATCH is an entertainment phenomenon. This popularity has led to obvious ancillary marketing and merchandising potential. With the hiring of a top licensing agency recently, the offers and licenses have quadrupled almost overnight. This in turn necessitates proper trademark and licensing requirements and precautions.
This article will highlight some of the issues which are dealt with on aday by day basis in the prosecution, registration and defense of theBAYWATCH trademarks worldwide.
The morning begins with a phone call from our London counsel with news ofan advertisement by a major European brewery which has used both the BAYWATCH trademark and the likeness or resemblance of one of theseries' female cast members. The advertisement is not authorized by theclient nor has the actress consented to the appropriation of her likeness.The matter is resolved with written undertakings or assurances given byboth the U.K. licensee for the brewery and the U.K. advertising agency whichcreated the advertisement.
The studio faxes a copy of a publication page from the Australian Trade Mark Official Gazette forwarded to the client by an enterprising Australian lawyer and prior to receipt of the client's watch notice re same. A "watch notice" can be purchased from one of several commercial trademark service firms to keep track of and provide notice in advance of identical or closely similar marks filed both in the United States and/or other countries. A previously unknown company (hereinafter, "third party") in Australia has applied for BAYWATCH in International Class 25 for clothing. The client's foreign distributor is contacted and advises us that the third party applicant is not licensed or authorized. A use investigation is ordered, followed by the filing of an Opposition.Negotiations with counsel for the third party proceed.
The day's mail includes "watch notice" correspondence which indicatesa third party has applied for BAYWATCH in International Class 41 in Colombia. The foreign distributor indicatesthat the applicant is, in fact, the authorized foreign broadcast licenseefor BAYWATCH in Colombia. After several unsuccessful attempts to reach the broadcast licensee and with the procedural opposition deadline rapidly approaching, the decision is made to contact our local Colombian trademark attorney. After a flurry of correspondence from both our local counsel in Colombia and the foreign distributor to theColombian broadcast licensee, the licensee agrees to assign or transferits application to the client. A Power of Attorney is legalized or authenticated(e.g., official government fees, seal and/or stamp obtained) and forwardedto the local associate and the matter is resolved.
A domestic (U.S.) on-line trademark search of the mark, BAYWATCH, reveals a new third party application for the identicalmark in International Class 3 for cosmetics, namely, sunblock lotion, hairlotion, namely shampoo and conditioner. A phone call to the client's licensing agency reveals that the applicant is not licensed or otherwise authorized. A cease and desist letter is prepared, including a sample express abandonmentletter to be signed by the applicant and to be filed with the AssistantCommissioner for Trademarks. The cease and desist letter is sent to theapplicant advising him that his application has been applied for fraudulentlyand that any use by him of the mark BAYWATCH is likely to cause confusion with the client's exclusive rights to thissame mark. The applicant replies that he will agree to abandon his applicationand provides confirmation of his filing same with the Trademark Office.
A facsimile arrives from the client's licensing agent with the updated LicenseeList. The Licensee List reveals several classes of goods not previouslyincluded in trademark applications filed in several foreign jurisdictions.The client is informed that several more trademark applications must befiled to support new licensees. The business issue as to whether the licensewill pay for the cost of the trademark application(s) and its defense isdiscussed. The necessity for supporting the licensees with trademark applicationsis recognized as the client's obligation and this reality wins out overthe alternative of not investing in trademark coverage.
MATTEL INC., a major BAYWATCH toy licensee, including but not limited to, BAYWATCH & BARBIE®, action figures, dolls and accessories, forwards correspondence objecting to the length of the trademark and copyright notice (e.g., BAYWATCH is a trademark and © 1994 The BAYWATCH Production Company. All Rights Reserved. BARBIE® is a registered trademark of Mattel, Inc.) previously forwarded by the client's licensing agency. The issue is discussed on the phone and an abbreviatedcopyright and trademark notice is agreed upon for packaging and on product.
The afternoon mail includes correspondence from the client's in-house counselwho on a recent trip to Florida has seen a restaurant called
"BAY WATCH". Several "cease and desist" lettersare sent with no result. Local counsel is contacted; an investigation isconducted to determine the extent of the Restaurant's "use" ofBAYWATCH; a final cease and desist letteris sent with no result. A complaint is filed, the defendants are served,and the matter is resolved with the defendants agreeing to discontinue alluse of the cleint's mark or any confusingly similar mark.
The studio forwards by facsimile acopy of a postcard from Italy aparently sent by several fans of one of theseries' lead male actors. The postcard is a photograph of five of the series'male and female stars. The postcard also uses the client's trademark, BAYWATCH. The only clue to the source of the postcard is the nameof an unknown company perhaps in the Italian television industry. A callto the licensing agent and the foreign distributor reveals that the postcardis not authorized. Italian counsel is contacted and the price to conductan investigation at the local associate's hourly rate is determined to betoo high, together with the local associate's minimal prior experience withthis client. The decision is made to use the German foreign distributorwhich has an Italian subsidiary. A color photocopy is forwarded to the Italiansubsidiary and within a week it is determined that the postcard was a promotion in a local Italian television industry magazine. Result: the client's licensee is not threatened, the infringement has ceased and the magazine publisher has indicated no further duplicate or distribution will occur.
A Worldwide Trademark Report of the mark BAYWATCH is analyzed and several new third party trademark applications in foreignjurisdictions are revealed. Venezuelan local counsel is contacted and apreliminary investigation is conducted as to the third party applications.The foreign distributor confirms that the third parties are not authorized.Oppositions are authorized to be filed and are pending.
A Letter of Protest After Publication is prepared and filing instructionsgiven to a local associate in Washington, D.C. for the filing of said Letterof Protest against an identical mark for (marine) batteries and for retailservices for same. In the United States, a "Letter of Protest"can be filed with the Assistant Commissioner for Trademarks prior to andshortly after publication of a third party trademark application. Typically,the basis for such a Letter of Protest is likelihood of confusion with aprior registration or prior application. A "cease and desist"letter is already in the mail with a substantive response promised fromcounsel for the applicant. A settlement is reached with the applicant agreeingto withdraw both of its applications and to discontinue all sales.
BAYWATCH®, just as any other successful entertainment property,must establish and defend its trademark rights throughout the world in orderto support its licensees and to protect its proprietary interests againstcounterfeiters and infringers. Communication with the client, foreignassociates, the licensing agent, distributors and litigation counsel isan absolute necessity. Diligence in the maintenance of a calendar forpending matters, attention to detail, and management of foreign associatesand local counsel is also a priority. The establishment of a network oftrusted and experienced foreign counsel will save the client time and money,in addition to reducing the stress otherwise incurred by lead trademarkcounsel in the management of a worldwide trademark and licensing program.While not intended to be all-inclusive, this article has attempted to outlinesome of the typical issues and the daily realities associated with a worldfamous entertainment property such as BAYWATCH®.
*William E. Maguire first began working onBAYWATCH in 1988 and has representedThe BAYWATCH Production Company withrespect to its trademark, copyright and licensing matters since 1991. Heis currently in private practice in the Westwood area of Los Angeles. Hehas been a member of the California bar since 1981, has an LL.M. degreein Intellectual Property, and was previously Senior Counsel for Malibu ComicsEntertainment, Inc., a subsidiary of Marvel Entertainment Group, Inc.
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