Decision on Redskins Trademark Proper but Mostly Symbollic

No question, the PTO got it right.

The PTO’s administrative law branch, the U.S. Trademark Trial and Appeal Board, finally decided the REDSKINS trademark is too offensive to continue to justify the expanded rights that stem from federal registration. So it canceled the team’s six registrations on the ground the mark is “immoral or scandalous.”

The mark has been so offensive to Native Americans for so long, it’s a shame it took the government this long to strip the mark of the additional rights it had granted.

However, its doing so in no way means the team has to stop using the mark or that others can sell merchandise bearing the trademark without liability. Both of those things were widely reported, but they’re wrong. Unless and until a court makes the same determination the TTAB made, the Washington Redskins can continue to enforce their common law rights in their mark — rights that date back decades. Hopefully someday soon a court will decide as the TTAB did, but it is not obligated to do so. Unlike other federal agency decisions, U.S. courts do not defer to PTO decisions.

For that reason, the TTAB’s decision is mostly symbollic. Since we recognize common law trademark rights in the United States — rights that automatically arise through trademark use — cancellation of the team’s registrations doesn’t cancel the mark itself.

KIRO interviewed me about this issue on the radio. Text of the story is viewable here. Unlike other news coverage, KIRO didn’t overstate the decision’s limited implications.

Washington's Bill to Tax Marijuana Trademarks is a Bad Idea

During Washington’s last legislative session, Olympia considered taxing marijuana trademarks.

It’s a bad idea.

But first, a little background on the bill.

If passed, House Bill 1976, would have levied a “tax of three dollars and sixty cents per thousand dollars of assessed value upon the assessed valuation of all trademarks, trade names, brand names, patents, and copyrights that are related to marijuana.” Revenue collected from the tax would go into the state’s Life Sciences Discovery Fund and be earmarked for marijuana farming research.

Rep. Jeff Morris (D - Mt. Vernon) introduced the bill, which was referred to the House finance committee. No further action was taken on the bill before the legislative session ended.

The bill states it was intended “to enable Washington to capitalize on its unique position” of being the only other state besides Colorado to legalize recreational marijuana. Presumably, the idea is for the state to skim a little off the top from those competing in our legal marijuana industry.

Like I said, it’s a bad idea. Here’s four reasons why. (Believe me, there are more, but I’m trying to be brief.)

First, Washington already has a tax on trademarks. It’s called a filing fee. Every trademark owner wishing to register its mark with the state must pay the state $55 per mark — plus another $50 if the owner wants the state to expedite the processing of its application. The proposed new tax on trademarks would add to this existing fee structure, which is nothing more than a tax.

Second, doesn’t the state want to encourage businesses to protect their intellectual property, as well as to compete in our legal marijuana industry? Voters have already made the policy judgment of wanting to create that industry. One would think the state would seek to benefit from the economic boost the new industry should create, along with the attendant sales and other taxes the state should expect to collect as a result. Singling out for an additional tax those who seek to maximize the value of their intellectual property in a particular industry seems counterproductive and strange.

Third, the bill says nothing about how the tax would be calculated. Exactly who is supposed to assess the value of the trademarks, trade names, and other intellectual property that’s to be taxed? The bill doesn’t say. That’s a critical omission.

Finally — and for this blog, most importantly — the bill seems to misunderstand the purpose and value of trademarks. Trademarks indicate who makes the good or service sold with the brand. A trademark that’s never been used in an industry that does not yet exist has no value at all. A trademark becomes valuable only when a seller earns a good reputation. Therefore, the tax would target the companies with the best reputation — the responsible ones that have provided good, consistent quality, and who treat their customers right. Burdening the best corporate citizens with a tax aimed specifically at them would not seem to encourage the type of behavior this state should want.

Let’s hope the bill stays where it is — just one legislator’s bad idea — and never becomes law.

Help Trademarks Serve Their Purpose by Adopting Memorable Marks

Unusual — even risqué — brands are memorable, which can pay dividends.

That’s the upshot of a recent New York Times article.

For example, David Hall was running a small construction company when he decided to phase out the scaffolding part of his business. As a joke, for one last job, he put up a banner that identified his company as the “Mammoth Erection” company. 

His phone hasn’t stopped ringing since.

That isn’t a surprise to trademark lawyers. A trademark tells consumers where the good or service comes from. The whole idea is if a customer likes what you’re selling, all they have to do is look for your trademark (such as your name, logo, or tag line) to buy from you again. And if your trademark is forgettable, that’s hard for the customer to do.

I’m not a suggesting being cute (or shocking) just for the sake of being cute (or shocking). But as long as you’re being smart about selecting a trademark, it makes sense to start investing in one that will help your company stand out from the crowd.

Wines are a classic example. Stores are filled with bottles of CHATEAU this and RIDGE that. Forgettable. But not MAD HOUSEWIFE, MONOGAMY, or FAT BASTARD. They may not be the best wines around, but the playfulness and originality their names convey suggest they’re not the worst out there, either. They certainly stand out from the boring names their competitors use.

This is a more branding than law, but producers can help trademarks serve their purpose by selecting marks that stand out.

The PTO Says My Mark is Descriptive. What Can I Do?

Trademarks are source identifiers. They tell consumers where a good or service comes from. So when a mark consists of descriptive words, it really doesn’t function as a trademark. It tells consumers about the product — not who sells it.

For this reason, the U.S. Patent and Trademark Office will refuse to register a mark it deems to be “merely descriptive.” That is, a mark that describes a feature or benefit of the product, or the geographic area in which the product is made. “Self-laudatory” (“We’re the best!”) trademarks also fit into this category.

If the PTO objects because it perceives a mark as being descriptive, the trademark owner has a few options. First, it can try to convince the examining attorney that the mark isn’t descriptive, but instead is “suggestive.” The main difference between these categories is how quickly and specifically the mark conveys the information. If the mark leaves nothing to the consumer’s imagination (like SPEEDY AUTO GLASS), then it will be deemed descriptive. But if the consumer needs to use a little imagination to understand the information being communicated or the message is vague (like CHICKEN OF THE SEA), the mark will be classified as “suggestive.” If the mark is suggestive, the PTO will withdraw its objection and the mark can be registered on the Principal Register.

If the owner has used the mark for a long time (at least five years, but longer is better) or spent lots of money advertising the mark (like a million or more dollars), the owner can make a case that an otherwise descriptive mark functions as a source identifier because it has acquired secondary meaning. Secondary meaning means that consumers have come to associate the description with a particular source (like SEATTLE’S BEST COFFEE) and thus it functions as a trademark.

The owner’s last resort in responding to an objection is to amend its application to the Supplemental Register. The Supplemental Register is where descriptive marks without secondary meaning can be registered. The upside is that the owner can use the Circle-R symbol to indicate the mark is registered, and the PTO will cite the registration against future trademark owners applying for federal registration if the PTO deems the later-filer’s mark to cause a likelihood of confusion with the registered mark. The downside is the mark must be in use at the time the application is amended (i.e., there is no intent-to-use filing basis) and the Supplemental Register does not give the registrant the presumption of being the exclusive nationwide use of the mark in connection with the specified services — one of the main benefits of being on the Principal Register.

A trademark owner also can incorporate descriptive words into a new, distinctive trademark, such as a logo. Doing so (which requires a new application) can avoid a descriptiveness objection because the stylized design or other distinctive elements would make the mark more than “merely” descriptive. However, the owner should expect the PTO to require the owner to disclaim exclusive rights in the descriptive words that are included in the logo.

The Basics of "Look and Feel" and Personality Rights Under U.S. Law

I’m now back from Germany, where I traveled to help with a program sponsored by the University of Washington School of Law.

It combined UW law students with law students from Europe. The Europeans learned about American intellectual property law, and the Americans learned how they do things in Europe.

I spoke on two topics: “look and feel” protection under U.S. trademark law, and right of publicity under U.S. law. These issues come up from time to time in my practice, so they may be of interest to trademark owners.

The takeaway for “look and feel” protection: distinctive elements of product packaging, store interiors, or product design can be protectable under trademark law as “trade dress” if together they tell consumers where the product comes from. In other words, if they function the source-identifying role that trademarks play.

However, there are two big caveats. First, the elements can’t be functional. If they serve a useful purpose, they can’t be protectable under trademark law (though they could be protectable under patent law). Second, if they are part of the product themselves, the owner must prove that they have acquired secondary meaning, meaning that over time consumers have come to associate the trade dress (such as the product color, shape, or style) with a particular producer. Until that happens, product features can be freely copied.

The most important thing to know about right of publicity protection is that some states — including Washington — have statutes that protect against the commercial use of a person’s name, likeness, and voice without the person’s permission. The First Amendment is the biggest exception to such protection. The press can do most anything it likes without fear of liability. So can artists — as long as the artist embellishes the literal image of a person enough to transform it into a work of art (regardless of whether the art is good or bad, flattering or critical). Almost everyone else needs the person’s permission before making use of their “personality” in marketing a product.

My slides are available here (look and feel) and here (right of publicity).

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