The U.S. Supreme Court announced today that it will review whether the U.S. Trademark Office can deny registration of offensive trademarks or whether such prohibition violates the First Amendment. The dispute affects the constitutionality of Section 2(a) of the Lanham Act, which prohibits registration of such marks. The case originated in 2013 following the Office’s refusal to register THE SLANTS as a mark for an Oregon rock band on grounds that it was a derogatory slang phrase for people of Asian descent Continue Reading The SLANTS Trademark Will Play One More Gig: U.S. Supreme Court to Decide Constitutionality of Ban on Disparaging Trademarks
The US Trademark Trial and Appeal Board has, again, explained how and when surnames may function as trademarks. In re Enumclaw Farms LLC, Application Serial No. 85942195 (TTAB June 24, 2016). This blog has discussed this topic in the past, but the facts in this most recent case are worth another post.
Today the Federal Circuit Court of Appeals ruled that the section of the Lanham Act which bans registration of “disparaging” trademarks is an unconstitutional violation of First Amendment free speech.
The case, In re Simon Shiao Tam (case no. 14-1203), involved the U.S. Trademark Office’s refusal to register the mark THE SLANTS for a music band on grounds that it disparaged an ethnic group. In issuing its decision, the appeals court wrote that “[m]any of the marks rejected as disparaging convey hurtful speech that harms members of oft-stigmatized communities,” but that “the First Amendment protects even hurtful speech.” It went on to state that “[t]he government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks.”
This decision could impact the case pending before the U.S. Court of Appeals for the Fourth Circuit involving the cancellation of the Washington Redskins trademark registrations on grounds of disparagement.
Stay tuned for further updates.
Written by: Susan Neuberger Weller
It is that time of year again, coming off St. Patrick’s Day celebrations, when everyone gets on the college basketball bandwagon in the season of “MARCH MADNESS.” Brackets are being completed, college jerseys are being pulled out of mothballs, bars and restaurants are hiring extra help, and work schedules are being rearranged around televised game times so everyone can join in the fun and relive the glory days. And, just as with the frenzy surrounding the Super Bowl, there will be events of all types organized around the country to take part in the “madness.” However, as we warned you in January right before the Super Bowl, if you are planning such events, do not use “March Madness” by itself or in conjunction with other words or terms in any commercial promotions of any kind including your own events, third-party events, contests, games, product promotions, or sales unless you want the NCAA to pay you an unwanted visit.
As is SUPER BOWL, the phrase MARCH MADNESS is a federally registered trademark owned by the NCAA for use in connection with products and services related to the college basketball tournament. This gives the NCAA exclusive nationwide rights to use the term on and in connection with these goods and services and prohibits anyone else from using the term in any way that would suggest any type of association, affiliation, sponsorship, endorsement, licensed status or any other connection between it and the NCAA, when in fact no such status exists. The NCAA takes this very seriously, as do its official licensed partners, who pay millions of dollars to use MARCH MADNESS in connection with their commercial promotions.
Although the NCAA was not the originator of the “March Madness” slogan, and negotiated for a number of years to acquire the federal rights to this mark, its rights are now firmly entrenched. Moreover, it is very aggressive in pursuing unauthorized uses of MARCH MADNESS or infringing versions of this mark not only to protect its own trademark rights, but to protect the rights of its licensed sponsors.
So, feel free to show your team spirit, cheer on your alma mater at the top of your lungs, wear that old jersey, and join in all the revelry, but do not engage in any advertising or promotional activity for any products or services using MARCH MADNESS or any altered version of the mark unless you have a paid sponsorship to do so.
Written by : Susan Neuberger Weller
The New York Times Magazine had a very interesting article in its January 18, 2014 issue entitled “Call It What It Is.” The article, written by Neal Gabler, looks into the methods and ideologies used to create new product brand names. As a trademark lawyer who has been practicing for quite a while, the substance of the article was not particularly new to me. However, many businesses who struggle each day to invent new company and brand names for their businesses, products, and services may find some inspiration and creative ideas from this piece. As the article makes clear, the naming process can be a very long road and it is better to start sooner rather than later. Moreover, once a new name is chosen, and has been fully searched and cleared by trademark counsel, it is strongly recommended that an intent to use application for the new brand name be filed promptly at the US Trademark Office to protect it at the earliest time possible.
So, roll up those sleeves and let the branding begin!
Written by: Susan Neuberger Weller
As we all know, Super Bowl XLIX will be played this Sunday in Phoenix, Arizona between the defending Champion Seattle Seahawks and the New England Patriots. There will be events of all kinds organized all around the country focused on this football game. If you are planning something, just remember: do not use “Super Bowl” by itself or in conjunction with other words or terms in any commercial promotions of any kind including your own events, third-party events, contests, games, product promotions, or sales. You just can’t do it. Continue Reading Don’t Even Think About Advertising a SUPER BOWL Party!
As we ring in the new year, we thought we would remind everyone why the importance of a comprehensive trademark search for a new company name and for a new trademark cannot be overstated:
1. Any word in any language can function as a trademark depending on how it is used.
2. Every business has at least one company name, trade name, brand name, logo, or slogan it uses to advertise its goods or services, making it vulnerable to a claim of infringement if the use has not been cleared properly.
3. A Secretary of State’s clearance and registration of a name for a corporation or other business entity is NOT a defense to a claim of trademark infringement.
4. Unlike copyright infringement, trademark infringement can be innocent. Prior knowledge of a preexisting trademark is not required for infringement liability to exist.
5. Domain names alone do not create trademark or similar protected rights, but can violate trademark rights.
6. Marks do not need to be identical or used competitively in order to be infringing.
7. Famous marks and names should never be used even for completely unrelated purposes.
8. Unregistered common law marks are valid and fully enforceable in the United States.
9. There is no such thing as international or worldwide trademark rights. Trademark rights exist on a country-by-country basis. In most countries, the first to file a trademark application and obtain a registration owns the rights in that country. Use without registration is irrelevant. Foreign rights should be searched and/or applied for before any public announcements of expansion plans.
10. Trademarks are a use-it-or-lose-it asset. Unlike patents and copyrights, trademarks can exist forever if they are being used. Intent-to-use applications can be filed for trademarks for which there are plans underway but which may not be placed into actual use for, at least, four years.
A thorough trademark search is one of the best investments a company can make in a new endeavor. No one wants to invest time, money, and effort in a new name or mark only to find out later that all is lost, including the initial goodwill and reputation developed under that new name and mark. So do not simply choose a new name or mark wisely, also search it well.
The Bankruptcy Code generally permits intellectual property licensees to continue using licensed property despite a licensor’s bankruptcy filing. However, because the “intellectual property” definition in the Bankruptcy Code does not include “trademarks,” courts have varied on whether trademark licensees receive similar protection. A New Jersey bankruptcy court recently grappled with this issue, concluding that trademark licensees may retain their trademark rights. The court further concluded that such protections remain intact despite a section 363 “free and clear” sale to a third-party. To read more about this case, please access the full version of this Bankruptcy Advisory prepared by the Mintz Levin Bankruptcy Practice.
Written by: Susan Neuberger Weller
Fabric design is a creative art form that has existed for thousands of years. Although the methods for creating such designs have evolved, the purpose and function of such designs has not changed as significantly. Fabric designs are used for purely ornamental and decorative purposes, for purposes of identity, and also to convey information. From an intellectual property standpoint, how a fabric design is used may dictate what type of protection it can claim. In addition, the time it takes to obtain each type of IP protection, its duration, and the procedures for enforcement may also dictate the type of protection to seek. Continue Reading It’s a Material IP World: Trademarks, Copyrights, Design Patents and Fabric Designs
Further to our recent Tesla Motors post, Bloomberg and BNA report that Tesla has resolved its trademark dispute with Zhan Baosheng, the individual who registered the TESLA marks in China. Chinese authorities will cancel the existing TESLA Chinese trademark registrations and all web site names registered by Mr. Zahn in China will be transferred to Tesla. Needless to say, Tesla appears very pleased with this outcome and has stated that it will continue to move forward with growing its business in China.