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

Can I Use the Seahawks Logo in My Crafts?

These last few years, the Seattle Seahawks have been good. Really good. And the Sounders, too. Here’s to a lot more of that!

With the rise of our teams’ success, I get more of the same type of question. It focuses on whether local craftspersons can incorporate team names, logos, slogans, and/or colors in their handmade clothing, cakes, beer labels, and art. It’s to celebrate team pride; it’s to give the people what they want; and it’s to make a buck.

So what’s ok, and what’s not ok?

The answer turns on trademark law. Names, logos, slogans, and even colors tell consumers where goods and services come from. By incorporating these indicators into a product, an artisan risks misleading purchasers into thinking the goods are made by the team, are licensed by the team, or are approved by the team. Mistaken consumer assumptions hurt the team because it doesn’t profit from the sale, it doesn’t have a say in how its brand is used, and because bad-quality or inappropriate goods could hurt its reputation.

For practical purposes, small-time producers probably can fly under the teams’ radar. But that doesn’t mean it’s legal for them to wrap up their products in a team’s brand without permission.

The more a craftsperson takes from the team’s image — particularly its name and logo — the more likely he or she is to infringe the team’s trademark rights. As long as you’re selling goods or services, you’re subject to trademark laws. So, you shouldn’t be surprised if you hear from your favorite team if you use their brand without permission.

The same is true if you take your favorite athlete’s name. Natural persons often have extra rights against use of their names, likenesses, and signatures for commercial purposes without their permission, thanks to “personality” rights laws.

Artists are often exempt from these concerns. As long as the artwork contains a minimum amount of artistic embellishment, the First Amendment usually trumps trademark and personality rights protections. But regular folks who want to sell crafts on Etsy or in front of the stadium: you probably can’t “borrow” from your favorite team without stepping on its toes.

Let the Market Guide Your Trademark Decisions

Believe it or not, trademark law is here to serve you. Therefore, you should let the market guide your decisions in what trademarks to register and what enforcement actions to take.

Much of trademark law is optional. You don’t need a federal (or state) trademark registration. Getting a registration can be smart, but it’s not required. So, let the cost guide you in deciding whether it’s worth the effort.

The same is true with enforcing your trademark rights. The law doesn’t require trademark owners to oppose every application for a potentially-conflicting trademark registration. It also doesn’t require you to sue every potential infringer. Oftentimes, you get to pick your battles, and you should do so carefully.

It usually comes down to whether you would get a good return on your investment. In other words, you should apply to register your name, logo, and/or tag line if it would likely be worth your while to do so. The corollary is that if you wouldn’t likely obtain a good return on your investment, you shouldn’t bother. The same is true with seeking to enforce your trademark rights. Now, it’s often not very expensive to do what’s needed to maximize one’s trademark rights, but owners should be strategic in allocating their resources.

Granted, if you’re on the receiving end of a cease-and-desist letter or trademark infringement lawsuit, your options are more limited. But the value of your trademark investment and likelihood of success in maintaining it — read: practical economics — should still drive the train.

Let the market be your guide. Whether you’re playing offense or defense, a trademark lawyer can help you decide what steps are likely worthwhile, and what steps you can skip. But in the end, it’s usually not complicated. It should be about getting your money’s worth — doing the things that provide good value, and forgoing the things that don’t.

Beware of Phony Trademark Service Invoices

Trademark owners, take note. If you file an application for federal trademark registration, you should keep an eye out for misleading mailings from unscrupulous vendors trying to sell you (or trick you into paying for) things you don’t need.

This is one reason the U.S. Patent and Trademark Office warns as follows:

“By filing this application, you acknowledge that YOU HAVE NO RIGHT TO CONFIDENTIALITY in the information disclosed. The public will be able to view this information in the USPTO’s on-line databases and through internet search engines and other on-line databases.”

Heed this warning. Fraudsters troll the PTO’s public database and send applicants phony invoices and other official-looking mailings. Their names frequently mimic the PTO’s, and include words like “United States,” “U.S.,” “Trademark,” “Registration,” “Office,” and “Agency.” Ignore them. They are fraudulent. The senders count on a handful of trusting or careless recipients out of thousands to pay their “invoice.” Don’t be one of them.

All official mailings will come from the PTO in Alexandria, Virginia. Or, if your lawyer filed the application, official word will come solely from him or her. All official PTO emails will have .uspto.gov in the sender’s address.

There’s no way to get around providing your contact information when filing for federal trademark registration. That shouldn’t dissuade you from making a filing; just be smart when doing so. Thoroughly ignoring any unsolicited invoices you receive is the best way to take the profit motive out of these scams. You also can report them to the PTO at TMFeedback@uspto.gov.