Trademarks

USPTO TO INCREASE TRADEMARK FILING AND OTHER FEES

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Trademark application

On May 27, 2016, the United States Patent and Trademark Office (“USPTO”) published in the Federal Register a Notice of Proposed Rulemaking to adjust trademark fees [Notice].  If all goes as planned, the fee adjustments will be effective in January 2017.  Because many of the adjustments are fee increases, those planning to file an application for trademark registration may want to act sooner rather than later.

As you may know, the USPTO largely relies on self-funding to pay for trademark related operations.  This means that ideally those who use the various services provided by the Trademark Office pay for those services.  Because the overall goal is to achieve aggregate cost recovery, periodically, fees must be adjusted to match projected expenses.  The USPTO summarizes the objectives for the rulemaking as: Continue reading

Redskins Eye Supreme Court to Overturn Trademark Disparagement Restriction

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To update my earlier blog [Blog] concerning whether Section 2 (a) of the Lanham Act, 1946, which restricts federal registration of trademarks  found to be scandalous or disparaging, will withstand challenges to its constitutionality, the Redskins football team has raised the ante by its unusual petition to the Supreme Court.

In the petition, the Redskins suggests that the Supreme Court not consider the constitutionality of Section 2 (a) until after the team’s appeal of an adverse District Court ruling is decided by the U.S. Court of Appeals for the Fourth Circuit.  Continue reading

DISPARAGEMENT ISSUE IS FRONT & CENTER FOR USPTO TRADEMARK REGISTRATIONS

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Push pin on trademark textSection 2 (a) of the Lanham Act, 1946, 15 U.S.C. Sec. 2 (a), which restricts the registration of trademarks found by the USPTO to be scandalous or disparaging, was determined to be unconstitutional on the basis of the First Amendment by  the Court of Appeals for the Federal Circuit in a case (In re Simon Shiao Tam-2014-1203), brought by “The Slants,” an Asian-American rock band.  [Background]

Mr. Simon Shiao Tam, as the owner of the mark, filed in 2011 a registration application for  “The Slants” (Serial No. 85-472044).  The USPTO examiner rejected the application on the basis that the applied for mark was disparaging under Section 2 (a)  because the word had a long history of being used in a derogatory way for people of Asian decent.  The examining attorney believed that people of Asian decent would take offense from the use of the applied for mark.  The rejection was upheld by the Trademark Trial and Appeal Board (TTAB.) Continue reading

THE POWER OF LOGOS AND COLOR

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In a recent blog, Larry Bodine, a web and marketing guru, offers great advice to business owners when choosing the “look” of their logo/trademark. He provides information as to how some large companies came to adopt their famous marks, their investment expenses along with examples of  famous logo faux pas.  Larry’s blog re-enforces a message I have offered [Earlier Blog] as to how important it is to select your logo/trademark with care. [See Also]

WHY ARE THE SAN DIEGO CHARGERS TAKING PRE-EMPTIVE ACTION TO PROTECT THEIR RIGHTS IN FUTURE TRADEMARKS?

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Football Play Strategy Drawn Out On A Chalk BoardThe football world is abuzz with the possible relocation of the San Diego Chargers to Los Angeles. Background for Team Move.  While the outcome of where the Chargers end up is of short term interest, the more interesting question business owners should ask is: Why did the team file “intent to use” applications  Section 1(b), Lanham Act for federal registration of two possible marks with the United States Patent and Trademark Office (“USPTO”)? 1/  The answer is that the Chargers want to block others from hindering their future adoption of the new marks if the relocation happens.

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Can You Learn Anything from Monster Energy’s Run-In with the Beastie Boys?

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Energy drink can on white background

The dispute that led to the legal battle between the Beastie Boys band and Monster Energy Company (“Monster”), involved Monster’s use without permission of songs by the Beastie Boys and verbal references to the band and a member, Adam Yauch, in a promotional video. Monster’s negligible music licensing procedures were strongly criticized by the trial judge. The one-sided victory of the Beastie Boys for copyright infringement and false endorsement has led to Monster being found financially liable for its misjudgment.

In an earlier blog [Justin Bieber et al], I considered the misuse by one musician of the works of another. The Beastie Boy’s case gives guidance to business owners who wish to incorporate the intellectual property of others in their marketing and other creative endeavors with impunity.

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RIGHTS OF PUBLICITY TRUMP COMMERCIAL SPEECH IN JORDAN VS JEWEL FOOD STORE CASE
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InBasketball  earlier blogs, I raised the alarm about improperly using a famous personality in the advertising of a business.  If you need a clearer example of how even a large urban supermarket chain can stir up a hornet’s nest when they try to coast on the fame of a celebrity, consider the debacle encountered by Jewel Food Stores (“Jewel”) when it placed a full-page ad in Sports Illustrated congratulating Michael Jordan for his induction into the Naismith Memorial Basketball Hall of Fame.  The “Michael” was not amused and sued them for $5 million for misappropriation of his identity under the Illinois Right of Publicity Act, the Illinois Consumer Fraud and Deceptive Business Practices Act and the Lanham Act (the principal federal trademark law).

The Seventh Circuit Court of Appeals concluded that the ad was commercial speech, not noncommercial speech which would be fully protected by the First Amendment as alleged by Jewel and, therefore, the trial can proceed on the merits, doubtless arriving at a decision in favor of actual and possibly punitive damages for Mr. Jordan, if a settlement is not reached sooner.

To understand why it is not a good idea to try to hitch your business to a “star” by including the name, image or likeness of a celebrity in any of your products (i.e., website, domain name, T shirts) or marketing materials, it is important to recognize that famous people, even deceased ones, can own rights in the commercial exploitation of their own celebrity status.  Moreover, this right is not limited to the United States, but is recognized in other countries, an important consideration if you are doing business over the Internet.  (See list of states and countries protecting the Right of Publicity.)

Basically, celebrities have property rights in their fame and, therefore, they decide how to exploit it commercially.  Jewel argued that it was not trying to benefit commercially from the advertisement, but rather were exercising its First Amendment Right to congratulate Michael Jordan.  The Seventh Circuit was not persuaded given that Jewel’s logo and marketing slogan were conspicuously linked to Mr. Jordan in the text of it’s ad’s congratulatory message. (See the Seventh Circuit’s opinion for full factual details and analysis.)

                While it is true that commercial speech is entitled to protection under the First Amendment, nonetheless, it can be subjected to governmental restriction unlike the more favored full protection accorded to noncommercial expression.  That is why in this instance, because the Seventh Circuit has concluded that Jewel’s ad was commercial speech, the company finds itself in the unhappy position of getting more than it bargained for.

WHAT IT TAKES TO PROTECT A CERTIFICATION MARK? (Part 2)
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Orange Tick Circled Shows Quality And Excellence

This blog follows on my earlier examination of why a certification mark could improve the bottom line for both for-profit and not-for-profit organizations.

If you think that setting up a certification program is in your future, or you already have one in place, here are some points to consider as you develop or perfect the program:

1.         A certification mark is not the same as the mark your organization uses to identify its goods and services (“identification mark”).  While the design of the certification mark may incorporate some elements from your identification mark, it should nonetheless have distinctive elements to eliminate confusion between the two. 

2.         Because there are basically three types of marks, it is critical to understand which kind applies to your organization, because the standards for the United States Patent and Trademark Office (“USPTO”) registration process differ: 

            a.         Marks that certify that goods or services originate from a specific geographic region (“Champagne” for wine, “Roquefort” for cheese, “Indian River Fruit” for Florida citrus);

            b.         Marks that certify that goods or services meet certain standards for quality, materials or mode of manufacture (“UL” mark certifies electrical equipment meets certain safety standards; “Pure Wool” logo means the product is made of a 100% wool); and

            c.         Marks that certify that the work or labor for a product or service was performed by a member of a union or other person meeting certain standards.( Union workmanship).

3.         Identify the standards that an applicant to your program must meet.  These may be created by your organization or based on standards established by a governmental agency or other standard developer.

4.         The certification mark will be used by third parties, not by your organization.  Once the third party has met the standards your organization has set, they will be permitted to use the certification mark in connection with their own goods or services to tell the world they are “qualified” to do so by the certifier.

5.         Consider federally registering your certification mark with the USPTO, which, once accomplished, basically gives your organization protection in all 50 states.

6.         If you are going to request federal registration of the mark, the USPTO will require you to submit a copy of the standards you have established to determine whether others may use the certification mark. (37 C.F.R. §2.45)

7.         To protect your rights in the mark and not risk being deemed to have abandoned it, maintain an appropriate policing program to insure that it will be used correctly by the third parties.  Here are two actions you should take:

a.         Issue a letter that makes it clear that they are using the certification mark under license from your organization and if they fail to maintain the standards you have required, you can revoke the privilege; and

b.         Monitor third-party use of your certification mark.  For example, depending on what is appropriate, you could require periodic refresher training or status reporting.  At such intervals, your organization could charge fees to support this monitoring process.

In these difficult economic times, developing a certification program can not only help to set you apart from your competition but also force others to play by your rules.  That is definitely an enviable position.

CERTIFICATION MARKS USEFUL TO TRADE ASSOCIATIONS, CHARITIES AND FOR-PROFITS (Part 1)
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Blue Tick Circled Shows Checked and Verified

One good method for a trade association, charitable organization or for-profit entity to expand its mission while simultaneously generating additional revenues is to establish a certification program. 

The entity wishing to set up a certification program (the “certifier”) would require an “applicant” wishing to acquire new skills to demonstrate competence in a particular field by meeting the standards set by the certifier.  Once a course or test was successfully completed, the certifier would then allow the applicant to use the certifier’s certification mark, in other words its “seal of approval.” (Think of the quintessential “Good Housekeeping Seal of Approval.”)   

By adopting a certification program, the certifier has taken steps not only to improve the standards of performance within its area of interest but also to create a new source of revenue generated from any training or monitoring it requires to maintain quality controls.

The breadth of activity that lends itself to the adoption of a certification program is huge.   Based on a recent review of the records of the United States Patent and Trademark Office (“USPTO”), there were more than 10,000 live records for applications and registrations of certification marks.  (Examples of certification marks) This suggests that many organizations recognize the value of running such programs.

If your company is considering incorporating a certification program into your general mission, a critical element is the selection of the designation (i.e., the certification mark itself), which a successful applicant may use to show its level of competence. 

So. . . what exactly is a certification mark?  It can be any word, name, symbol, device or combination of same which is used by a person other than the owner of the mark to certify (a) to regional or other origin; (b) to the material, mode of manufacture, quality, accuracy or other characteristics of such person’s good or services; or (c) that the work or labor on goods or services was performed by members of a union or other organization. . . . .” (Applicable USPTO regulations.) 

A distinct message is conveyed by a certification mark which differs from that of an identification mark that informs the consuming public of the source of the goods or services which they are buying (GM versus Ford; Apple versus Samsung).  When the consumer sees a certification mark, the mark signifies that the goods or services have been examined, tested or inspected by someone other than the entity displaying the mark and that the independent standards of the marks’ owner have been met.

In my next blog, I will cover some basics principals to aid in the design and protection of your organization’s certification mark.

 

RIGHTS OF PUBLICITY REMAIN STRONG EVEN AFTER YOU ARE DEAD
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guitarA recent opinion by the Ninth Circuit Court of Appeals concerning a dispute over the use of trademarks associated with Jimi Hendrix, even though deceased, should remind those thinking of using the images, likenesses or names of celebrities, whether alive or dead, to proceed with caution.  

In an earlier blog I discussed a court decision in which the football celebrity, James Brown, did not fare well with respect to the First Amendment rights of a game developer using his likeness as an avatar.(Link to prior post.) 

But in Experience Hendrix LLC v Hendrixlicensing.com Ltd,  the court ruled in favor of the plaintiff who holds trademarks that it uses to license and sell products related to Jimi Hendrix. (See full opinion.)

Andrew Pitsicalis and his company, Hendrixlicensing.com, LLC, the defendants, (collectively “Pitsicalis”), were licensing Hendrix-related merchandise.  In contrast to the facts in the James Brown case, the defendants here were not creating anything new.  Rather, Pitsicalis sought to cash in on the fame of Jimi Hendrix by relying on an argument that, because the celebrity was dead, the heir did not have post-mortem publicity rights and therefore could not prevent Pitsicalis from trading in original images and likenesses of Mr. Hendrix because there was no per se infringement of the plaintiff’s trademark rights. 

Pitsicalis’ argument did not prevent a jury from hearing the case and finding for the plaintiff.  The trial court entered a permanent injunction in favor of the plaintiff.  However the judge gave Pitsicalis somewhat of a reprieve by reducing the jury’s damages award, which was in excess of $1.7 million, to $60,000 and by limiting the attorney fees award to one tenth of the requested $500,000. 

On appeal, the Ninth Circuit Court of Appeals, while remanding the case for a new trial on damages, telegraphed its willingness to allow the higher jury award and suggested that the trial court reconsider its decision about attorney fees.

From a business person’s point of view, this case screams “Be Careful” if you are considering the use of images, likenesses or names of the famous, whether dead or alive.