Pixelated TM sign made from cubes, mosaic pattern

By Lauren Rucinski

The Supreme Court ruled Monday that a provision of federal trademark law banning offensive trademarks from federal registration is unconstitutional. Matal v. Tam, No. 15-1293 (U.S. June 19, 2017). The case concerned a dance rock band’s application for a federal trademark registration of the band’s name, “The Slants.” “Slants” is a derogatory term for persons of Asian descent. However, members of the band are Asian-Americans and the band believes that by taking that slur as the name of their group, they will help to “reclaim” the term and drain its denigrating force. However, the U.S. Patent and Trademark Office (“PTO”) denied the band name’s federal trademark application because the trademark was offensive.[1]

The provision of federal trademark law at issue is the “disparagement clause” and states that a trademark may be denied for federal registration on the basis that it may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead.” 15 USC §1052(a). In applying the provision to a given trademark, an examiner at the PTO considers the likely meaning of the matter and whether that meaning may be disparaging to a “substantial composite” of the referenced group. The fact that an applicant may be a member of that group or has good intentions underlying its use of a term does not obviate the fact that a substantial composite of the referenced group would find the term objectionable.[2] Relying on this provision and analysis, the Trademark Examiner rejected the band’s federal trademark registration. The band appealed to the Examiner and PTO appeals board and eventually to the US Federal Circuit Court of Appeals. In re Tam, 808 F.3d 1321 (Fed. Cir. 2015). The Federal Circuit’s decision was a hodgepodge of reasoning, but ultimately found that the disparagement clause was unconstitutional. On appeal, the Supreme Court affirmed.

A unanimous court of eight of the Justices agreed that the disparagement clause violates the free speech clause of the First Amendment because it engages in viewpoint-based discrimination.[3] Viewpoint discrimination occurs when the government has singled out a subset of messages for disfavor based on the views expressed. The Court found that the disparagement provision engages in viewpoint-based discrimination because it would allow “happy-talk” or marks that promote positivity while discouraging disparaging or derogatory marks. Matal v. Tam, No. 15-1293 at 25. The Court went on to reiterate that “[g]iving offense” is a viewpoint and that the “public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.” Id. at 23 (citing Street v New York, 394 U.S. 576 (1969)).

Notably, the Court could not agree on whether trademarks are commercial speech. Commercial speech is subject to a relaxed standard of review. See Central Hudson Gas & Electric Corp. v. Public Service Commission of New York, 447 U.S. 557 (1980). However, all Justices agreed that regardless of whether trademarks are commercial speech, the viewpoint-based discrimination necessarily invokes a heightened standard, and in any case, the disparagement provision could not pass the relaxed standard. See Justice Kennedy’s Concurring Opinion in which Justices Ginsburg, Sotomayor, and Kagan joined.

The Court also held that although the PTO is an arm of the federal government, trademarks are private, not government speech. The Court opined that the “federal government does not dream up these marks and it does not edit the marks submitted for registration.”[4] Id. at 14. Therefore, the notion that the content of a registered mark is government speech is farfetched. The Court also pointed out troublesome, practical implications of labeling a trademark as government speech. For instance, other systems of government registration could easily be characterized in the same way, namely copyright. Id. at 18.

Monday’s decision is a boost to the First Amendment and could signify broader implications. It is significant because the Court directly addressed a constitutional, First Amendment question. The case was especially watched by others seeking to protect a brand deemed offensive by the PTO such as the Washington Redskins NFL team. It is also significant because although the PTO’s ability to deny a mark based on offensiveness may be diminished if not revoked, the extent of the First Amendment’s reach into trademark law is left unanswered.

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[1] Trademark law is not strictly federal law. A federally unregistered trademark may be enforced under state common law, or if it has been registered in a state, under that state’s registration system. Louisiana’s trademark law contains similar language to the federal law shot down in this case: “A mark by which the goods or services of any applicant for registration may be distinguished from the goods or services of others shall not be registered if it: (2) Consists of or comprises matter which may disparage or falsely suggest a connection with persons, living or dead, educational institutions, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” La. R.S. § 51:212.

[2] See the Trademark Manual of Examining Procedure at https://tmep.uspto.gov/RDMS/TMEP/current.

[3] Justice Gorsuch did not participate in the decision of the case.

[4] The Court further qualified that were trademarks to be considered government speech, the government would in fact be “saying many unseemly things, “expressing contradictory views,” and “unashamedly endorsing a vast array of commercial products.” Id. at 15 (citing marks such as “make.believe” (Sony), “Think different” (Apple), “Just do it” (Nike) and “Have it Your way” (Burger King)).

IP Infographic - Man

By Devin Ricci

Trademarks and service marks (collectively, “trademarks”) are source identifiers or brand names. For example, JUST DO IT ® identifies a brand of athletic clothing and gear by Nike. A trademark is essentially a word, phrase, symbol, design or combination thereof that is used to identify and distinguish the source of one party’s goods or services from those of another.

In reality, trademarks are regulated and protected in order to protect the consuming public. Trademarks have evolved as a use-based right which protects the goodwill that the public has come to associate with a source identifier for a good or service. Therefore, as a use-based right, a trademark owner develops his rights by actually using the mark in commerce. In other words, as a user consistently uses the mark overtime with his or her respective products and services, the marketplace of applicable consumers begins to associate the mark with the user’s goods and/or services, thereby creating and instilling the goodwill protected by trademark law. In it in this sense that a consumer ordering a BigMac® sandwich at any McDonald’s® restaurant knows exactly what he is going to receive.

Furthermore, because a trademark is a use-based right, it is not always necessary to register the mark in order for the user to obtain and assert rights in the mark. Indeed, most state laws provide for common law trademark rights which offer some protection to unregistered marks. However, because the degree of protection varies greatly from state to state, registration of a mark (particularly, a federal trademark registration) has significant advantages, particularly in a state such as Louisiana which traditionally rebukes common law traditions.

For example, a federally registered trademark is eligible for relief under the Lanham Act1 and allows a trademark owner to bring suit in federal court. A federal registration also carries with it presumptions of the validity of the mark, ownership by the registrant, and exclusive rights to use the mark in conjunction with the claimed goods and services. The federal registration essentially acts as a constructive use of the mark throughout the United States. This generally means that the user is considered to have at least minimal use-based rights throughout the entirety of the United States as of the registration date (with the ability to tie back that use to the date the application was filed). Such priority effectively prevents others who would start selling like goods or providing like services in a manner which would be deemed confusingly similar2 to the registered mark. Moreover, a federal registration can also aid in land-locking prior users into the geographic regions in which the prior users were operating when the registrant’s marks actually registered.

ELIGIBILITY OF TERMS FOR TRADEMARK PROTECTION

In the trademark sense, a term or word can fall under one of five categories – arbitrary, fanciful, suggestive, descriptive and generic. Terms that are arbitrary, fanciful and suggestive are distinct on their own rendering them prime candidates for trademarks. These are terms that do not immediately convey the underlying product or describe characteristics or intended usage of the products of services. For example, with Apple® computers, the term “apple” has nothing to do with computers and would thus be arbitrary, rendering it a prime candidate for a trademark. At the bare minimum, a term should be suggestive, meaning that it takes an imaginative step for a consumer to link the intended trademark with the covered goods and services. This need for an imaginative step or indirect association can be the defining line between a suggestive mark that is sufficiently distinct to be protectable and a descriptive mark that cannot be protected on its own.

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Trademarks cannot be used to protect generic or purely descriptive terms for the goods and services they identify, with one caveat discussed below. It is in this sense that Apple® computers cannot foreclose upon others using the term “computers,” and Planter’s® Peanuts cannot stop someone from using any type of “nuts” in their brand. Purely generic terms are free for all to use and can never be subject to trademark protection. It is possible over time to develop a descriptive mark into a protectable trademark. To do so, the mark must be sufficiently used for a sufficient period such that the consuming public begins to identify the mark as yours despite the descriptive nature. This is termed as the development of secondary meaning or “acquired distinctiveness” to the descriptive mark.

TRADEMARK DESIGNATION – WHERE AND WHEN TO USE TM, SM, OR ®

The TM and SM symbols represent trademark and service mark, respectively. These marks can be used without registration to alert third parties that the user is claiming some rights in the designated word, phrase, symbol, design, or combination thereof as a trademark. As soon as a party commences any sales, offers for sales, or marketing materials that employ a mark in conjunction with goods or services, the mark should be designated with either the TM or SM symbol. Failure to properly do so may hinder or prevent the user from asserting its rights in the mark.

Therefore, anywhere the mark is used as a source identifier (e.g., websites, product labels, e-mail footers, advertising materials, product packaging, etc.), the mark should be designated as such. To do so, the symbol should be prominently displayed so as to alert third parties that the user asserts trademark rights, but that does not mean that the symbol has to be a focal point of the mark. For example, the following designation of “trademark” with the “TM” displayed as a superscript would suffice: TrademarkTM.

It should be further noted that technically the term “trademark” is only fitting when discussing a source identifier for goods while the term “service mark” is only proper when discussing a source identifier for services. Through time, the public has grouped the two in common language under the term “trademark.” Despite this trend, the correct and recommended practice is to use the appropriate TM or SM designation depending on whether the mark will identify goods (TM) or services (SM). If the mark is used to designate both, however, it is acceptable to only use the TM symbol.

The ® (meaning “Registered”) designation, on the other hand, can only be used after federal registration has been obtained from the United States Patent and Trademark Office (“USPTO”). During the application process, it is suggested that the applied-for mark is marked with the TM or SM symbol, as applicable, to alert the public that the user asserts rights in the mark. After the applicant receives a certificate of registration from the USPTO, use of the mark as a source identifier for the registered goods or services should be designated by the ® symbol to alert the public that the user has obtained a federally registered trademark.

Finally, trademarks should be used as adjectives, not nouns. When properly used, trademarks modify the underlying products to present a source or brand of the product – e.g., Planter’s® Peanuts, Nike® tennis shoes or Apple® computers. Use of a trademark as a noun is improper and could diminish trademark rights.

APPLICATION PROCESS

A common question regarding the trademark application process is: “When should a user consider filing a trademark application?” Although the answer varies under the circumstances, the safest time to start considering the trademark application is during the brand development process. Even when picking and determining a brand name, it would be wise for a potential user to conduct a search of the federal trademark registry to determine if a prior federal registration exists which may prevent the widespread use of the mark. If the search does not turn up any prior registrations, which may cause issues down the line, the user should then consider filing an application with the USPTO to secure federal rights in the mark.

Generally, there are two types of applications a user can file with the USPTO: the use-based application and the intent to use-based application. Trademarks are use-based rights, so the trademark must be used to obtain any rights in the mark, including a registration. Furthermore,to obtain federal protection, the use must be in interstate commerce, i.e., the use must occur in at least two states.

Use-based applications are appropriate when a mark is already in use in commerce. The applicant files an application complete with specimen materials showing use of the mark in conjunction with the claimed goods and services with the USPTO. Typically, in about three to six months, the applicant will receive correspondence from the USPTO that the mark is either accepted or rejected. If rejected, the applicant has the opportunity to submit a response to the USPTO to overcome the rejection and seek registration. Once a mark is accepted by the USPTO, it is published in the Official Gazette whereby third parties have an opportunity to challenge the mark based on their prior registrations. If the application avoids any challenges, it is registered, and a certificate of registration is mailed to the applicant. The typical period for an application which “smoothly” passes through the USPTO is about six months to one year from date of filing to receipt of a certificate of registration. As previously stated, all trademarks should be designated with the proper TM or SM markings throughout the application process.

An intent-to-use (commonly referred to as an ITU) application acts as name reservation for a mark. If a user anticipates launching a product or campaign under a particular brand, the intent-to-use application allows them to file an application with the USPTO, which will reserve the mark until the applicant is capable of proving the mark is used in interstate commerce. An intent-to-use application follows the normal path of a use-based application with the exception that no specimen of use is filed with the application because no use has yet commenced. If the mark is accepted, the applicant is given six months from the date of acceptance to file a statement of use with applicable fee showing use of the mark in conjunction with the claimed goods or services in interstate commerce. If the applicant is unable to submit the statement of use at the time, the applicant is able to pay extension fees on a per class basis for an additional six-month extension of the name reservation. With timely requests and payments of extension fees, the applicant is afforded up to two and a half years of extensions (three years from the date of the notice of allowance) before the mark will be deemed abandoned.

KEAN MILLER TRADEMARK PROCESS

Kean Miller’s general practice for federal trademark applications is to conduct trademark searches, and if the search results come back favoring registration, to prepare and file a single federal trademark application in a single class of goods or services for a flat rate. The general format of the process includes the following services:

  • Search of the federal trademark records to assess whether a pre-existing federal trademark registration may cause the denial of the application on grounds of confusing similarity;
  • Analysis of the trademark search results including the creation of a memorandum to the client discussing prior registrations and other troublesome aspects which may arise during the application process;
  • Drafting and filing the federal trademark application (including filing fee for one class of goods/services3);
  • Tracking the application with the USPTO;
  • Responding to any non-substantive office actions on the client’s behalf; and
  • Mailing the trademark registration upon receipt.

A similar process is also available for state trademark registrations.

 

1 The Lanham Act (also known as the Trademark Act of 1976) is the federal statute that governs trademarks, service marks and unfair competition. It was passed by Congress on July 5, 1946, and signed into law by President Harry Truman.

2 Please note: “Confusing Similarity,” i.e., whether or not the public is likely to confuse the source of the marks, is the test for trademark infringement under the Lanham Act. The analysis of confusing similarity is left out of this primer in an attempt to limit the scope to information on obtaining rights as opposed to enforcing them after obtained.

3 The USPTO requires trademark applications to provide a specific description of the types of goods and services to be identified by the trademark. The USPTO divides goods and services into as many as 45 different classes, each of which requires a separate $275 filing fee. Applications for multiple classes of goods or services will require an additional fee of $275 per class for which the mark is applied.

 

Disclaimer: This guide does not constitute legal advice and is not intended to supplement the advice that would be obtained by retaining a qualified trademark attorney to help you identify and protect your intellectual property rights. It is being provided in an effort to clear up some of the more common trademark myths and misconceptions. It is highly suggested that anyone facing a potential trademark issue seek legal counsel on the issue.

By Jessica Engler

Singer-songwriter Taylor Swift is primarily known for her musical talents, but the pop star has recently made headlines for her work in the intellectual property realm. According to the database of the United States Patent and Trademark Office (“USPTO”), Swift has filed several trademark applications to register catchphrases from her 2014 album 1989. Swift has filed applications for registration of “Nice to Meet You. Where You Been?”, “Could Show You Incredible Things”, “Cause We Never Go Out of Style”, “Party Like It’s 1989,” and “This Sick Beat.” In the applications, Swift indicated that she plans to use these phrases on a plethora of different merchandise including apparel, paper products, toys, household items, and Christmas ornaments.

Because less people are buying full albums—instead opting for MP3s of single songs and streaming services—attempting to trademark lyrics may be a shrewd, yet smart, business move. Phrases can immediately “go viral” in today’s Internet age, and a person’s potentially marketable phrase may be quickly used by another for profit. For example, the phrase “Ain’t Nobody Got Time for That,” exclaimed by Kimberly “Sweet Brown” Wilkins in a local news interview turned Internet viral video, is the subject of a pending trademark application filed by Ebony Arrington, who uses the phrase “Ain’t Nobody Got Time for That!” as the title of her regular radio bit. Ms. Arrington has disclosed that she got the name for this radio bit from the “Sweet Brown” video interview. With how quickly other individuals may move in on another person’s creativity, companies and individuals may be inclined to emulate Swift and lock up phrases associated with them and/or their advertising campaigns before anyone else can profit. However, before immediately filing “knee-jerk” applications for trademark protection, potential applicants should consider the trademark-ability of slogans.

A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods or services of one seller or provider from those of others, and to indicate the source of the goods/services. See 15 U.S.C. §1127. For a slogan to be protectable as a trademark, it must be either (1) inherently distinctive or (2) have acquired enough secondary meaning to be immediately associated with a particular brand of product or service. Secondary meaning is acquired when the meaning of a phrase transcends the literal meaning of its words and instead identifies a source. An example of a phrase that the USPTO has deemed as achieving secondary meaning is “Mayhem is everywhere,” which was registered in 2012 by Allstate Insurance Company to protect the slogan made popular by their “Mayhem” advertising campaign.

It is worth noting that none of Taylor Swift’s applications nor the “Ain’t Nobody Got Time for That” application have yet been accepted by the USPTO as registered marks. Therefore, their acceptability as a trademark has yet to be determined. However, for those potential applicants that have been inspired by Swift’s intellectual property maneuvers, consultation with a trademark attorney regarding the strength and secondary meaning of their slogans prior to application can be highly beneficial.

This article first appeared on the Louisiana Law Blog here

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By Bill Caughman

In 1999, the Internet Corporation for Assigned Names and Numbers (“ICANN”) adopted the Uniform Domain-Name Dispute-Resolution Policy (UDRP) which established a system for dispute resolution between owners of internet domain names and trademark owners. The UDRP allows a trademark owner to file a complaint with various administrative bodies, such as the National Arbitration Forum, by which the trademark owner asserts their rights and requests that offending domain names, including those held by cybersquatters, be either cancelled or transferred to the trademark owner as the rightful owner of a given trademark.

While the UDRP is certainly less expensive and less time consuming than formal litigation in court, the proceedings usually take many months and expenses can be substantial. In 2013, a new system for dispute resolution was implemented called the Uniform Rapid Suspension System (URS). This system has been expanding in use and coverage; only recently URS became applicable to .us top level domains. The URS is intended to provide certain trademark owners with an alternative to the UDRP. Under the URS, when a trademark owner files a complaint, the registrar of the domain name immediately locks the domain to prevent modification or transfer. The registrar will then provide notice to the domain owner of the complaint, and the domain owner has 14 days to file a response. If there is no response from the domain owner (which is frequent for cybersquatters), then the domain is immediately suspended. Once the domain is suspended, when a person enters the domain name into a search engine, they will be redirected to a URS placeholder page showing that the domain is suspended. This remedy is different from the UDRP where the domain can be terminated or transferred to the trademark owner, but it does shut down the offending site much faster, and the fees are typically less under the URS procedure.

There are some additional limitations of the URS process. A trademark owner desiring to use the URS must be the owner of a mark consisting of a word only, as opposed to a trademark on a design, symbol or other feature that is ordinarily protectable under trademark law. Additionally, the burden of proof under the URS is “clear and convincing” which is a higher standard than the “preponderance of evidence” standard under the UDRP.

For the right situation, the URS is another tool to help trademark owners protect their rights in the ever expanding world of internet domain names.

This article first appeared on the Louisiana Law Blog here