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By Anthony Verna, Esq.

The last post about Apple's new trademark "NUMBERS," put a thought in the mind of Bryan Adams of Teaneck, NJ.

"Is that why the TV show is called 'Numb3rs'?"

Well, that's hard to say. If I were to guess, I would say that is more of a stylistic choice than a choice because of trademark law.

This is for a few reasons. First off, not many television shows have their titles registered as a trademark. The simple reason for that is there was a time when television shows were not as marketed as they are today. The only association for the name was, probably, the show.

Today, with the advent of t-shirts and DVDs and a million different action figures based on so many television shows, it should come as no surprise that more titles are being registered.

"NUMB3ERS" recently registered on January 31, 2006. Its registration number is 3055208 (for those who would like to look it up). It is registered in International Class 41 under the goods/services of "Entertainment services in the nature of a dramatic television series." (This does make me wonder how a television series provides services of any nature if it's dramatic. It seems more like goods than services to me.)

"NUMBERS" for Apple has not yet registered, but was allowed to continue. It is in International Class 9 for goods/services of "computer software for home, education, business, and developer use."

Can "NUMBERS" and "NUMB3RS" exist next to each other? Absolutely. One of the hallmarks of trademark law is that marks are defined by their industry, goods/services the mark is related to, and the strength of the mark.

Here, the two marks are in completely different industries. One is for a television show and the other is for computer software. You can also argue that the two marks are not that strong.

Trademark strength is defined by how it is related to its mark. The types of marks are defined as:

• Fanciful
• Arbitrary
• Suggestive
• Descriptive
• Generic

A fanciful mark is a mark that has no definition in the dictionary. These are the strongest trademarks because the only relation that exists is to the product sold. Think "Kodak" for cameras and film, or "Clorox" for bleach.

An arbitrary mark is a mark that is a word that is not used in the context of the mark. Think of "Oracle" for computer software or, even "Apple" for computers.

A suggestive mark suggests some quality or characteristic of the mark. "Coppertone" for sun tanning products is the classic example.

A descriptive mark is the weakest kind of trademark. There is a direct link between the mark and the products without any thought needed by consumers. Think "Jiffy Lube" for automobile oil change services. These marks can become stronger with time and use.

A generic term is not a trademark and has no protection. Think "Ball" or "dish."

How does this relate to "Numbers"? Well, both are probably suggestive marks. "Numbers" for a spreadsheet program describes what the software does. There might be more to it, but on the most basic level, the mark describes the product. "Numb3ers" is a television show about a person who uses advanced mathematic principles in order to solve mysteries. It can adequately suggest the premise of the show.

Think about a mark like "eBay" or "iPod." If someone started to make eBay brand home appliances, there would be a likelihood of confusion because "eBay" can only mean the website that sells goods by third parties in an auction format. The link is there in consumer consciousness.

Do the different spellings mean anything? No. They are pronounced the same and would be treated as the same word. Note that "doughnut" (the correct spelling) is treated just like "donut" in trademark law. They sound the same and they also look relatively similar.

So, "Numbers" can describe software and "Numb3ers" can describe a television show. The marks are not strong enough to cause confusion in consumer thought. The spelling differences will not mean much, either.

Full post as published by Trademark, Copyright and Entertainment Law Forum on July 20, 2006 (boomark / email).