Floodgates on "Offensive" Trademarks Not Open Yet

Section 2(a) of the Lanham Act bars registration of trademarks that may “disparage” persons, institutions, beliefs, or national symbols, or bring them into “contempt, or disrepute” (the “disparagement” clause); or that include “immoral” or “scandalous” matter (the “scandalousness” clause).

In June, the Supreme Court held that the disparagement clause violates the First Amendment. See Matal v. Tam, 582 U.S. ___ (2017). In that case, the Court found that the disparabement clause-based denial of an application to register THE SLANTS by the Asian-American lead singer of the Portland-based band of that name infringed the applicant’s free speech rights (and, indeed, his effort to claim a racial slur as a badge of honor). For this reason, the disparagement clause is no longer a ground on which the U.S. Patent and Trademark Office will deny an application for federal trademark registration.

Importantly, however, this decision doesn’t extend to the scandalousness clause. While the constitutionality of that provision is separately being challenged, the case hasn’t yet been decided. See In re Brunetti, No. 15-1109 (Federal Circuit) (considering the registrability of the trademark FUCT for apparel). For now, therefore, any trademark the USPTO deems to be “immoral” or “scandalous” will be placed into suspension (i.e., frozen) until the Bruenetti case directs how those trademarks should be examined.

While trademark law is moving in the right direction, the floodgates have not yet opened on profanity or other trademark elements that some may consider offensive. That time probably will come, but pending the Federal Circuit’s decision in Bruenetti, it’s not here quite yet.

Best IP Practices for the Small Business Owner

I often get trademark and copyright questions from startups or small business owners. Though one size doesn’t fit all, there are some common things to think about when getting your IP house in order.

1. Consider registering your trademarks. You can expand the automatic common law rights that arise through using your trademarks if you register them with the U.S. Patent and Trademark Office (yielding national rights) or secretary of state’s office (yielding statewide rights). Your top priority is probaby your business name, followed by your logo, followed by your tag-line. Getting a registration confirms you are the owner and gives you the legal presumption of being the exclusive owner throughout the U.S. (if you get a federal registration) or state (if you get a state registration) for the goods and services you sell under the brand. These expanded rights give you a powerful tool to keep imitators of your brand(s) at bay. Registration isn’t required, so weigh the expected benefits against the cost.

2. Consider registering your copyrights. Copyright law protects against copying. Registration with the U.S. Copyright Office isn’t technically required, but you can’t enforce your rights without at least having an application for registration in the pipeline (if you’re on the West Coast/in the Ninth Circuit). Moreover, if the copying occurrs after your registration issues, you can elect statutory damages and seek attorney’s fees in a copyright infringement lawsuit, which you can’t do if copying occurs before registration. Even if you don’t foresee going to court, having these remedies available gives added heft to a cease-and-desist letter you might send which, by itself, can deter and stop copying. As with trademarks, you should critically consider whether you would get enough bang for your buck before deciding to file.

3. Assignments from vendors. A related copyright consideration is making sure that any vendor or independent contractor that has done creative work for you has assigned their rights to you. This goes for website development and any other writing, audio, or visual work you may have commissioned. Since the “work for hire” doctrine only applies to employees, everyone else who does creative work needs to assign their copyright interest to you in a signed writing. Otherwise, they will continue to own rights in their work and may throw your ability to use, adapt, and sell the work into question.

4. Keep your secrets secret. If your employees or contractors need access to your competitive intelligence to do their jobs, you should consider making sure it doesn’t walk out the door when your relationship ends. You should protect your formulas, customer lists, product ideas, pricing strategies, and other commercially-sensitive information by limiting access to such information to those with a genuine need to know. You can also protect such information with nondisclosure agreements, noncompetition agreements and nonsolicitation agreements. There are limitations to such agreements, but you can minimize the chance of losing exclusive rights in your trade secrets by learning the universe of tools available to protect them.

5. Talk with a patent lawyer. Your invention, method, and design may be patentable. Similarly, they could be covered by someone else’s patent. A patent lawyer can tell you what you need to know to understand your rights, including maximizing your protection and minimizing the risk of receiving a claim against you.

6. Understand the limits of IP law. Lastly, you should realize that intellectual property law doesn’t cover everything — not by a longshot. Trademark law only protects against similar brands in the context of similar goods or services. Copyright law only protects against the copying of original forms of expression (text, photos, videos, code, and the like). It doesn’t cover ideas, functional aspects, or common means of expression. Trade secret law only protects against the misuse of information that is valuable because it is secret, and that you have taken reasonable steps to keep secret. Reverse-engineering can be ok, and in some cases, intentional copying can be ok. Many other limitations exist. The sooner you learn your rights, the sooner you can plan accordingly.

Mastering Specimens of Use: Tricky, but Essential

Proving up trademark use to the USPTO’s satisfaction can be tricky.

It needn’t be, but it’s not always intuitive, which can lead to mistakes.

The first thing to remember is that the proof of use — called the “specimen” — needs to reflect the exact trademark the applicant applied to register. If the “drawing,” or form of mark the applicant applied to register, is in color, has a box around it, or contains other words, then the specimen needs to have all of those things. The only exception is for very minor — hardly noticeable — differences. This means the applicant needs to be careful to apply to register the precise form it is using or plans to use. Any legally significant difference between the drawing and the specimen will cause the examining attorney to deny the application.

The other main thing to consider is that the proof needs to show the mark being used in the context of the goods or services listed on the application. This means if the application is for a restaurant, the proof needs to show the mark being prominently used to promote the restaurant. This could be on a restaurant sign or menu, for example — as long as the photograph showing such use makes it clear the mark is being used to promote the restaurant. Since a restaurant is considered to be a service, a website screen shot would also work — again, as long as the page prominently showed the mark being used to promote the restaurant.

Goods are different story. The USPTO usually will accept proofs of use of a trademark for goods only if the mark is affixed to the good or is displayed on product packaging. Website screen shots don’t cut it.

Apparel presents its own pitfalls. The government will object to specimens that only show the mark being used for “decorative” purposes. This means that a mark on the chest of a t-shirt, for example, won’t support trademark use. The USPTO deems such use to be just a decoration, rather than an indicator of who made the shirt. To prove up use for clothing, the trademark needs to be on a tag or hang-tag attached to the garment. The same is true for coffee mugs, prints, magnets, and other promotional-type items, though marks can also be displayed on the back or bottom of the item, or on a box or container.

At first, these principles can be hard to learn. However, they need to be mastered because they’re essential to getting a trademark registered.

NYT Best-seller Illustrates How Trademarks Can Become Meaningless

I’m pleased to report that excerpts from a 2011 STL post appear in the 2016 NYT best-seller, “Real Food/Fake Food.”

Author Larry Olmsted riffs on my discussion about “American” Kobe beef. I like what he’s done.

The point of the post, and one of the points of the book, is that marketing labels stop meaning anything when they are stretched beyond their original designations. Kobe beef is a case in point. It used to designate special (and especially tasty) beef raised in Kobe, Japan. But when it shows up on menus as “American” Kobe beef, and the U.S. Patent and Trademark Office allows different producers to register trademarks like “AMERICAN STYLE KOBE BEEF,” “AMERICAN CERTIFIED KOBE BEEF,” and “PREMIER AMERICAN KOBE BEEF,” the Kobe beef designation no longer means what it used to. Indeed, it arguably no longer means anything at all.

This is a good example of how a strong trademark can lose its power. When other producers co-opt a brand, and give it their own twist, consumers eventually no longer think of the original trademark owner. Eventually, they may not think of anything.

If Kobe beef can come from producers in the States, what does it mean to say it’s Kobe beef?

Trademark owners should learn from this lesson. If you don’t stop others from using your trademark, you eventually can lose the equity you worked so hard to build up in your brand.

New PTO Interface Clarifies Applicant's Factual Representations

The U.S. Patent and Trademark Office recently revised its online interface. It now requires applicants for federal trademark registration to check boxes confirming the representations they’ve always made when filing new applications.

I like what they’ve done, since it forces applicants to consider the factual and legal basis for their filing.

Applicants now must confirm:

If the application is based on existing use in customer sales

  • The applicant believes he/she/it is the owner of the trademark or service mark sought to be registered;
  • The mark is in use in commerce on or in connection with the goods/services listed in the application;
  • The proof of use shows the mark as used on or in connection with the goods/services listed in the application; and
  • All facts stated in the application are true.

If the application is based on intended future use

  • The applicant believes he/she/it is enttitled to use the mark sought to be registered;
  • The applicant has a bona fide intent to use the mark in customer sales; and
  • All facts stated in the application are true.

For both types of applications

  • To the best of the applicant’s knowledge and belief, no other persons have the right to use the mark in commerce in the identical form or such a similar form that the use would be likely to cause consumer confusion; and
  • The applicant makes its statements under penalty of perjury.

Again, these factual representations are nothing new. However, the new filing format helpfully clarifies the representations that applicants for federal trademark registration make. If any are not true, it’s not appropriate to file the application. And if the applicant falsely makes a factual representation, he/she/it risks having the resulting registration be invalidated.

Posted on January 17, 2017 by Registered CommenterMichael Atkins | CommentsPost a Comment | EmailEmail | PrintPrint
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