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Alex Reese
Alex Reese, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 3425
Experience:  Experienced in intellectual property law
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I started a company called Self-Tape Auditions. Another

Customer Question

I started a company called Self-Tape Auditions. Another company in my area called The SelfTape Creative Studios, contacted me and said that they own the trademark to the word SelfTape. A Self Tape in case you aren't aware is when an actor is asked to put him or herself on tape for an audition instead of actually going into to see them. The term self tape is used widely in the entertainment world, and the guy who owns the trademark did not coin the phrase nor is it an exclusive service. He is saying that I cannot use the words Self Tape in my company name or to describe my service. He has not sent a cease and desist letter yet. He said he'd give me 15 days to change everything. I contacted a company that is called Hot Shot Self Taping and they said he had done the same thing to them 2 years ago, but they had just decided to change the name from Hot Shot Self Tapes to Hot Shot Self Taping.
Submitted: 5 months ago.
Category: Intellectual Property Law
Expert:  Alex Reese replied 5 months ago.

hello.

Customer: replied 5 months ago.
Hi
Expert:  Alex Reese replied 5 months ago.

I would not be worried, because the term "self-tape" is merely descriptive of the goods/services and as such would not qualify as a protectable trademark unless this one guy's business is truly associated with that term (which is doubtful) such that it has gained consumer association etc. I suspect that the term cannot be trademarked due to descriptiveness and thus anyone can use it.

Expert:  Alex Reese replied 5 months ago.

Seems like the best approach is to call his bluff and ignore him, or respond by saying that the term is merely descriptive and he does not have TM rights in it. Business have a right to use descriptive terms, they cannot be taken out of the vocabulary by trademarks.

Expert:  Alex Reese replied 5 months ago.

If he was at all serious you will get a C&D letter from an attorney, but I doubt you ever will because he knows he does not have enforceable TM rights

Customer: replied 5 months ago.
I did look up the trademark and he does have one on the term selftape, but that's what I thought it would be hard to enforce. Thanks for your help
Expert:  Alex Reese replied 5 months ago.

It's the type of trademark that would be invalidated in court once evidence was submitted that its a merely descriptive term in the industry...so if he does not back off I would have a TM attorney write a letter attacking the validity of the TM and indicating that if he pursues legal action you will seek to invalidate the TM