The PTO, the First Amendment, and Disparaging (Re)Marks

A note before we start: This post contains racial slurs because they are a part of the trademarks at issue in the cases I am discussing. After struggling with how to address this fact, I have decided to spell them out in full because 1) they are spelled out in the trademarks as well as the cases; and 2) in one case, the slur was deliberately chosen by a member of the relevant racial group as a political statement. I wish to handle this matter with sensitivity, and I welcome an open and honest discussion about this choice; if you choose to comment, though, refer to my Terms of Use for my comment policy.

By now, you have probably heard about the Washington Redskins “losing” their trademarks. Some of the reports going around are a little overblown; the team hasn’t actually lost its ability to use the trademark, but the federal trial court in the Eastern District of Virginia has ruled that the U.S. Patent and Trademark Office (PTO) acted appropriately when it decided to remove the trademark from the Principal Register (cancel the mark registration) because it was a disparaging term. The Principal Register is a list that the PTO maintains of trademarks that meet its standards for receiving certain nationwide statutory protections. Among the standards: a mark cannot be “immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.” Sometimes the PTO believes a mark meets its standards and registers a mark, but later a third party introduces evidence that convinces the PTO that the mark did not actually meet the standards. That is what happened here: a group of Native Americans brought evidence to the PTO showing that the “Redskins” marks were disparaging, so the PTO decided to cancel registration. If a mark is not registered with the PTO, the owner can still use the mark, and the mark may still be eligible for common law protection. The team certainly did not lose its marks entirely. In fact, because this was a trial court decision about a PTO decision, it is not yet final by a long shot; the decision may be appealed to the Circuit Court of Appeals with jurisdiction over the trial court (in this case, the Fourth Circuit), and from there it may even be heard by the Supreme Court. The team’s marks are therefore still showing as “registered” on the PTO website.

What you may not have heard is that the Federal Circuit Court of Appeals (the FCCA) also recently ruled in a trademark case involving a racial slur, and it’s a doozie. The FCCA ruled that the First Amendment prohibits the government from denying federal registration of trademarks on the basis that they are disparaging. This overturns part of the Lanham Act, the law that allows the PTO to decide which trademarks to register, and opens the door to overturning other parts (e.g., the prohibition on “scandalous” marks). The case focused on a band named The Slants, a name selected by the group in order to reclaim a racial slur. The PTO had denied registration on the basis that the term was disparaging, the same reason it agreed to cancel registration of the Washington Redskins’ trademarks.

Why did the two courts take such very different approaches to the issue? There are several reasons, but it boils down to this: the court in the case that was decided first, the Redskins case, was a federal trial court. It was constrained by precedent (that is, by what higher courts had decided before on the same subject). The court in the Slants case (the FCCA) was an appellate court and was empowered to overturn its own precedent—and it did just that. In fact, the FCCA overturned one of the cases that the Virginia trial court relied upon in ruling against the football team. The Virginia court held that the decision not to register the mark was a form of government speech, outside the purview of the First Amendment; and that the speech was not prohibited by canceling the mark anyway. The Federal Circuit held that the government had no business constraining the speech of others by withholding the benefits associated with registration based on the content of the speech (the trademark).

What happens next could be the interesting part. For those who are unfamiliar with our court system, in the hierarchy of courts, there are many district courts throughout the country. Each district court’s decisions can be appealed to one of the twelve Circuit Courts of Appeals, depending mostly upon its geographic location. And each of the Circuit Courts of appeals’ decisions can, in turn, be appealed to the Supreme Court of the United States (SCOTUS). SCOTUS will usually only hear an appeal when there is a split among the Circuit Courts of Appeals—that is, when there is disagreement among the Circuits about how a particular legal issue ought to be handled.

The Federal Circuit Court of Appeals may have just created a split. The Virginia court’s ruling is on appeal to the Fourth Circuit Court of Appeals. If the Fourth Circuit decides not to overrule its own precedent on the subject of disparaging trademarks and the First Amendment, we could very well see the Supreme Court resolving this issue within the next few years.

My thought: it is surprising that it took this long for this First Amendment ruling to occur. The First Amendment has been methodically knocking down morality clause-like parts of statutes (like this portion of the Lanham Act) since the 1950s. At one time, the Post Office famously would not carry the book Lady Chatterley’s Lover, which it considered to be obscenity. The thought of the Post Office discriminating based on the intellectual content of the mail today is laughable. Today, the rulings upholding the Lanham Act’s prohibitions on disparaging marks have been twisting themselves in knots trying to draw distinctions between government speech and other speech. It has felt inconsistent with the progress of the First Amendment cases. I will be slightly surprised if there is still a circuit split after the Fourth Circuit rules on the Redskins case. If SCOTUS hears these cases, though, I will be shocked if this “morality clause” does not fall to the First Amendment.

What do you think?

Preventative Practices: Dodging Trademark Bullying

Various sticky trademark disputes have been in the news lately. First, there was the dispute between Apple and Proview Technology over the IPAD trademark in China (the dispute was settled on July 2). Then there was the still-ongoing dispute between the United States Olympic Committee and the knitting website Ravelry over the crafters’ use of the term RAVELYMPICS in connection with an Olympics-viewing event. My local newspaper is even getting in on the act, writing about how devastating a trademark dispute can be to small businesses.

So what can you, as a small business owner, do to protect yourself from a trademark dispute? Take some good old-fashioned advice!

  • An ounce of prevention is worth a pound of cure. Do not choose your business name or other trademarks without making sure that they are available and will not infringe on another company’s marks. This means conducting a thorough search. If you have the budget for it, hire a trademark attorney to obtain and interpret a full search report from a third-party provider. If you don’t have the budget for it, your attorney should at minimum conduct a preliminary check of potentially problematic trademarks in the U.S. Patent and Trademark Office (PTO) database and on the web.

  • Don’t cry over spilled milk. If you find that your favorite trademark is already taken, especially if it’s been taken by a company with deep pockets, take a deep breath and bid it farewell. As the examples in the Star Tribune article demonstrate, responding to an allegation of infringement can be financially devastating to a business. It is much better to let it go now and find a new mark that will better differentiate your business from the competition anyway.

  • The best defense is a good offense. Register your trademark as soon as possible. If you are operating only in one state, register it with the state. If you are operating in more than one state, register it federally with the PTO.

  • Know thyself. Keep good records regarding how you have used your trademark and in what markets. Keep copies of every advertisement you run in a file for each trademark you own (for electronic advertising, keep a record of what trademarks you have advertised in what geographic areas, your view rate, and your and click-through rate). Keep copies of complimentary (or not-so-complimentary) letters and emails from outside your immediate geographic region so that you know who has heard of your company and where they live. Keep track of where and when you have made sales. These records can be vital evidence of your geographic scope of ownership in the event of a dispute.

Follow these tips and make sure you have a great trademark attorney on your side, and you may be able to avoid disputes altogether. If not, you will be in good shape going into any disputes.

Legal Terms in Real Life: Genericide (Or: The Death of Google)

This series explains legal terms in plain language and gives examples from everyday life.

Today’s Legal Word of the Day is “genericide,” from trademark law. Genericide has been in the news recently because of Arizona resident David Elliott’s lawsuit to cancel two of Google’s trademark registrations for the term “GOOGLE” (Reg. Nos. 2,806,075 and 2,884,502). Black’s Law Dictionary (8th Ed.) defines “genericide” as: “The loss or cancellation of a trademark that no longer distinguishes the owner’s product from others’ products.”

Trademarks are words, symbols, or other source indicators (even colors, sounds, or scents) that help a consumer distinguish the products or services of one company from those of another. When a consumer is in the store, he or she can choose to purchase toothpaste labeled Crest, Arm & Hammer, Colgate, or any of a number of other toothpaste brands. The name on the box helps the consumer distinguish one from another. Trademark law is, at its heart, a form of consumer protection, although businesses, not consumers, must spend their time, energy, and money on building up and protecting trademarks as source identifiers.

As you know from our previous Legal Word of the Day, distinctiveness, there is a continuum of trademark strength, from fanciful to generic. Trademarks can move along this continuum. A mark that starts out as descriptive can become distinctive through long use and/or an advertising blitz, so that consumers associate what would be a descriptive name exclusively with a single product. For example, the clothing store The Children’s Place has at least arguably acquired distinctiveness as to its THE CHILDREN’S PLACE trademark.

Conversely, trademarks can move in the opposite direction along this continuum. A mark that starts out as fanciful or arbitrary may become the generic term for a product if consumers begin to believe that the trademark is the name of the product. This is genericide. Examples of marks that have been killed through genericide include ASPIRIN and THERMOS. Examples of marks that have at one time or another become endangered include BAND-AID, VELCRO, and TEFLON.

Whether Mr. Elliott successfully has Google’s GOOGLE trademark canceled will depend on whether he can show that the term has become so ubiquitous as a word meaning “to search” that consumers no longer associate the term with any particular search engine. He has several examples showing that the mark is often used as a verb meaning “to conduct an internet search”; however, he may have to show that consumers use the word to signify searching on any search engine, not only on Google’s search engine. This may prove difficult for him; I was unable to locate serious examples of people referring to “googling on Bing,” though parodies do exist.

Genericide is a fairly ironic death for a trademark; it signals that a company has become so successful at making its mark so well-known that the general public can no longer distinguish the trademark from the product. Genericide is death by success.

Legal Terms in Real Life: Distinctiveness

Intellectual Property Copyright Trademark Trade Secret

This series explains legal terms in plain language and gives examples from everyday life.

Today’s Legal Word of the Day is “distinctiveness,” from trademark law. Black’s Law Dictionary (8th Ed.) defines “distinctiveness” as: “The quality of a trademarked word, symbol, or device that identifies the goods of a particular merchant and distinguishes them from the goods of others.”

The United States Patent and Trademark Office (PTO) defines distinctiveness in relation to descriptiveness; a mark may be placed on the continuum between distinctive and descriptive as follows:

Distinctive ————————————————————————–> Descriptive Generic
Fanciful (invented for the sole purpose of being a mark) Arbitrary (real words that do not suggest or describe the goods or services) Suggestive (real words that require imagination to reach the goods or services) Merely descriptive (describes something about the goods or services) Generic (common or class name for the goods or services)

 

The real concern in trademark law, what makes a trademark a “strong” or “weak” mark, is whether or not the mark can distinguish the goods or services of a particular company from the goods or services of another company. This is why the PTO rates marks as distinctive or not. If the mark is describing a characteristic of the goods, it isn’t serving as a strong mark and may not deserve protection—more to the point, its owner may be trying to take words needed to describe the goods away from competitors. Here are some everyday examples:

Distinctive ————————————————————————–> Descriptive Generic
Fanciful: XEROX, GOOGLE,

KODAK

Arbitrary: APPLE (with electronics),

CARIBOU (with coffee)

Suggestive: ROLLER BLADES (with in-line skates),

COPPERTONE (with sunscreen),

UNCLE HUGO’S (with a book store specializing in science fiction)

Merely descriptive: FOR THE CURE (with charitable services for curing an illness),

TRAVELERS (with auto insurance)

Generic: USED BOOKS (for a used book store)

 

In short: distinctiveness refers to the quality of a trademark (or service mark) being unrelated to the goods (or services) it is used to identify.

Have a word or term you would like to see defined in this series? Contact me and let me know!

How Do I Protect My Idea? Part II: Trademarks and Service Marks

Protect My Idea - Trademark

You have a brilliant idea. With all your might, you are making it grow. You nurture it with your time, your energy, your hopes, your sweat, your dollars and your dreams.

This idea? Its time has arrived.

When you have put so much creativity, time and energy into something, you want to know that it is as well-protected as possible. My job as your attorney is to help you with the “how.” Sometimes, you know what kind of protection will work best for your idea. Sometimes, you don’t, or you aren’t sure which of your options is the best. This four-part series is a brief introduction to the various types of intellectual property. Today’s topic: trademarks and service marks.

A trademark (for products) or a service mark (for services) is something that identifies the source of a product or service. A mark (meaning either a trademark or service mark) may be a word, design, color, scent, or sound. However, it cannot be useful (referred to in trademark lingo as “functional”) in referring to the product or service whose source it is identifying. This is to prevent someone from removing a term or other identifier essential to selling a good or service from the marketplace—for example, you could not register a cylindrical shape as a trademark (trade dress) for a wheel. It would prevent anyone else from competing with you.

Rights in a mark can be obtained merely by using the mark in association with the sale of goods and services—this gives you rights in the mark at common law. You need not do more than this; however, there are many limitations to common law use, not the least of which is that it can be difficult to prove that you have the rights you claim. To show that you have common-law ownership of a mark, it may be necessary to demonstrate advertising over time and to show that consumers associate your company with the mark through surveys in the relevant geographical area. It is much simpler to obtain a registered mark, which grants rights throughout the state of registration or, for federal registration, throughout the United States. Other benefits of federal registration include being allowed to use the ® symbol; having a legal presumption of ownership nationwide; having the exclusive right to use the mark on or in connection with the goods or services set forth in the registration throughout the U.S.; and having your trademark visible in the fully searchable PTO database of registered trademarks, which can often deter would-be infringers.

Marks do require some maintenance. Most importantly, a mark must be used consistently in connection with the product or service that you are selling. If your mark is protected only at common law, this is all that you must do. If your mark is registered in your state, it will need to be renewed periodically; you should consult your state’s registration authority (usually the Secretary of State). If your mark is federally registered with the PTO, a Statement of Use must be filed between the fifth and sixth year following registration, and the mark must be renewed every ten years. There are small fees associated with these actions.

The greatest benefit of having a trademark is that no one else can use your mark (or a confusingly similar mark) for the same or similar goods and services within the protected geographic area. If you have elected to protect your mark only by common law use, that geographic area is limited to the places where the mark is in use and widely enough recognized to be a source identifier. If you have registered your mark with your state, that geographic area is limited to the state of registration. If you have registered your mark federally with the PTO, that geographic area is throughout the U.S. It is also possible to register trademarks in other countries, many of which do not have any common-law use, so if you wish to use and protect a mark in a foreign country, you should speak with an attorney.

The greatest drawback to having a trademark is that if you do not search carefully enough before adopting it, you may find that someone else is already using it and you are an infringer. If you are infringing on someone else’s mark, you may be forced to change your mark and lose any goodwill you have built up in it.

Further Reading

Trademark section of the PTO website: http://www.uspto.gov/trademarks/index.jsp