Historically, the U.S. Patent and Trademark Office (PTO) has refused to register trademarks considered to be offensive in that they disparaged a particular person, group or institution.  Now the PTO cannot deny the registration of offensive marks on the ground that they conclude the marks to be disparaging.

On June 19, the Supreme Court unanimously held (8-0) that so called the disparagement clause of the federal trademark law (Section 2(a) of the Lanham Act), is an unconstitutional violation of the First Amendment’s Free Speech Clause.

The case arose out of the name of a Portland, Oregon, rock band “The Slants.”  All the members of the band, including the plaintiff and trademark applicant, Simon Tam, are of Asian decent.  Mr. Tam filed a trademark application to federally register the band’s name, “The Slants.”  The band chose the name to “take back” or reclaim a term historically derogatory of people of Asian descent.  The PTO refused to register the mark as “derogatory or offensive” based on the dictionary meaning of ‘slants’ or ‘slant-eyes’ and also because one of the band’s performances was purportedly canceled “because of the band’s moniker.”  Tam appealed the decision to the PTO’s Trademark Trial and Appeal Board (TTAB), but with no success.  The next appeal, to the Court of Appeals for the Federal Circuit, was successful.  The Federal Circuit, in an en banc opinion, overturned the TTAB’s decision and found that the disparagement clause is unconstitutional under the Free Speech Clause.  Then, the Supreme Court granted a request for review of the case filed by the PTO.

The disparagement clause reads as “No trademark … shall be refused for registration on the principal register … unless it (a) consists of or comprises … matter which may disparage … persons, living or dead, institutions, [or] beliefs … into contempt, or disrepute.”  The Court first clarified the meaning of the statute as being clear in its prohibition of registration of trademarks, which “disparage persons who share a common race or ethnicity.”

The Court then turned to the PTO’s arguments that federally registered trademarks are government speech as a form of government subsidy, and, the disparagement clause should be reviewed under the “government program” doctrine, which is outside of the protection of the First Amendment.  First, the Court confirmed that the PTO’s registration of a trademark does not make a trademark government speech describing the argument as “far-fetched.”  The Court further exemplified the PTO’s mischaracterization of government speech using several examples, such as “make.believe” by Sony or “JUST DO IT” by Nike.   The Court noted that trademarks are “dream[ed] up” and “edit[ed]” by applicants, and therefore, “have not traditionally been used to covey a Government message.”  The Court was particularly concerned that the PTO’s elimination of First Amendment protection to registered trademarks would similarly apply to copyright registration, which is inconsistent with copyright protection for free expression, and therefore, rejected the government speech argument.  The Court also rejected the PTO’s position that trademark registration is a government subsidy because applicants pay filing fees and maintenance fees to the PTO for registering a trademark and “every government service requires the expenditure of government funds.”  Finally, the Court denied the application of the “government program” doctrine, which provides a limited public forum for private speech based on the content or the speaker.  The Court noted that in this case, the PTO exercised “viewpoint discrimination” under the disparagement clause because, although the clause prohibited disparagement of “any person, group, or institution,” it only prohibited offensive wording – a “happy-talk clause” and went “much further than is necessary to serve the interest asserted.”  The Court found that the disparagement clause as “not ‘narrowly drawn’ to drive out trademarks that support invidious discrimination.”  Thus, the Court concluded the disparagement clause violates the Free Speech Clause.

In this decision, Justice Alito emphasized the importance of trademarks, which express viewpoints and ideas, no matter how short the mark.  The government cannot censor such expressions based on viewpoint discrimination.

Notably, the decision is likely also a “win” for the Redskins football team, in its long-running Redskin trademark case, Pro Football Inc. v. Blackhorse, 112 F.Supp. 3d 439 (E.D. Va 2015).  In addition, the PTO will need to follow the decision in its review of forthcoming trademark applications.  Importantly, this decision surely broadens the protection available for trademarks, although it may result in a somewhat less-wholesome and more shocking trademark registrations going forward.

Michelle Lee resigned yesterday as the Director of the USPTO, effective immediately.  Ms. Lee’s resignation follows months of uncertainty regarding USPTO leadership during which time high-tech giants and politicians alike expressed much support for Ms. Lee to remain as the Under Secretary of Commerce for Intellectual Property and USPTO Director under the Trump administration.  Today, Secretary of Commerce Wilbur Ross named USPTO Associate Solicitor Joseph Matal as interim Director until Ms. Lee’s successor is named.  Former Federal Circuit Chief Judge Randall Rader; Philip Johnson, a SVP for IP Policy & Strategy at Johnson & Johnson; and Michael McKeon, a partner at Fish & Richardson have all expressed recent interest in leading the USPTO and have been rumored to have interviewed with Secretary Ross to replace Ms. Lee.

The World Intellectual Property Office (WIPO)  has released its 2016 Uniform Dispute Resolution Proceedings (UDRP) statistics.  http://www.wipo.int/pressroom/en/articles/2017/article_0003.html. The overall number of new cases increased by 10 percent over the previous year. WIPO indicates that this surge of new cases relates to the new generic Top-Level Domains (gTLDs) that have come online during the year.

Trademark owners filed 3,036 disputes involving a total of 5,374 domain names. It appears that .XYZ (321 domain names disputed), .TOP (153 domain names disputed) were the most common of the new GTLDs to be involved. That number still pales in comparison to the number of domain names disputed in the .COM (3135 domain names disputed), .NET (272 domain names disputed) and .ORG (129 domain names disputed).

The United States accounted for 895 cases being instituted with a corresponding 680 cases where a US entity was the Respondent. France came in second, with 466 cases being brought by a French entity. China took the honors of being the second most likely source of Respondents to actions, with 473 cases.

So, what does this mean? It appears that the original gTLD’s, in particular .COM is still the most contested (and sought after) domain address. That doesn’t appear to be going away anytime soon. It also means that with the increase of the new gTLD’s, trademark owners should consider monitoring their trademarks in the .XYZ and .TOP gTLDs in addition to the .COM gTLD. While it would be great to watch trademarks in all of the new domains, it can be financially prohibitive. Choose your battles, win the big wars.

A diverse panel of International Trademark Association (INTA) members met with Office of Harmonization for the Internal Market (OHIM) officials, OHIM examiners and representatives from the national offices in Alicante, Spain, for the 2015 INTA/OHIM Industry Training Seminars organized by INTA’s Government Officials Education and Training Committee. The training took place on October 5 in OHIM’s offices. The theme of this year’s meeting was “Trademarks in Regulated Industries.” The overall premise of the morning session was to acknowledge that there are agencies other than trademark offices involved in the companies’ decisions regarding the selection and use of trademarks.

INTA/OHIM EventRepresenting the alcoholic beverage industry was Jose Ramon Fernandez, Director of European Corporate Affairs for Pernod Ricard. The banking industry was represented by Carrie Hefte, Senior Vice President for Wells Fargo & Company. The pharmaceutical industry was represented by Maria Fernandez-Marquez, Senior European Corporate Counsel for Pfizer GmbH. The tobacco industry was represented by Ronald van Tuijl, Director of Intellectual Property for JT International, SA. The panel was moderated by Frances Jagla of Lane Powell PC.

The morning session was opened by H.M. Bello, Director of the OHIM Academy, and Ronald van Tuijl, President-elect of INTA. The session was attended by Senior OHIM representatives, OHIM examiners, and examiners and representatives from multiple national offices. In addition, over 50 attendees participated via webinar. After introducing their respective companies and responding to specific OHIM questions ranging from the importance of 3D marks to acquired distinctiveness to an overall “how is the office doing,” the panelists described the regulatory realities for their industries. These regulatory discussions helped to provide the examiners with a framework to identify specific challenges to companies doing business in regulated industries. Included in the discussion was the impact of geographical indications in the alcoholic beverage industry; the advent of the e-cigarette and “vaping “ products, and their classification in the tobacco industry;  the  relevant public degree of attention to products in the banking industry; as well as “why are so many trademarks for pharmaceuticals unpronounceable and impossible?” (such characterization was vehemently disputed by Ms. Fernandez-Marquez).

After a networking lunch among the panelists, INTA representatives and Senior Examiners, the afternoon sessions involved breakouts for each industry. The sessions gave the panelists one-on-one time with OHIM to provide additional information regarding their industries, including the challenges faced at OHIM and the national offices. This also gave OHIM the opportunity to ask questions of the panelists and to help define where they can improve upon or add new services to an industry.

It’s become a hard-knock life for ElevenParis, a French fashion retailer with stores in the U.S. After selling t-shirts and other merchandise with these not-so-subtle designs:

PharrellKanyeBeyonce

and this label:

tag

the kings and queens of rap and pop hustled together to bring 58(!) causes of action in a lawsuit filed in the Southern District of New York this week.

Among other claims, the complaint alleges violations of rights of publicity, unfair competition, and trademark infringement and dilution. The claims stem from the artists’ undeniable fame and federal trademark rights in marks such as BEYONCE’, KANYE WEST, CLOTHING BY KANYE WEST, PHARRELL WILLIAMS and RIHANNA. And it doesn’t help the defendants’ case that all of the pop plaintiffs own their own clothing lines, with most using the artists’ names as part of the brands.

The suit does not mince words and alleges that “Defendants are habitual, willful intellectual property infringers that, without authorization, usurp the trademarks, copyrights and other rights of A-list celebrities and world-recognized brands and deceive consumers into purchasing such products at the consumers’ expense and for defendants’ profit.” The allegations accuse defendants of continuing to sell unauthorized products “[e]ven after receiving warnings from Plaintiffs to cease and desist from selling the infringing products and to further cease and desist from using Plaintiffs’ names, images, likenesses and/or trademarks (or any marks colorably similar thereto).”  In addition, the plaintiffs claim that “Most egregiously, as of the date of the filing of this Complaint, Defendants’ ELEVENPARIS store located in New York City boldly offers for sale dozens of infringing merchandise including, but not limited to, the t-shirts and bags shown in the images above. The sale of this merchandise is in direct contravention of both a written agreement with at least one Plaintiff, as well as ongoing settlement discussions in which Defendants have represented and warranted that they are no longer selling infringing merchandise anywhere in the world.”

Sounds like the defendants are in for a fight from the divas who run this town.

A recent ruling from the Trademark Trial and Appeal Board (“the Board”) found a coupon to be an acceptable specimen for the U.S. Trademark Office (“Office”) showing proper trademark use. Johnson & Johnson submitted the coupon to the Trademark Examiner in support of the mark EARNING TRUST WITH EVERY BOTTLE for their usual line of products: “Facial and skin cleansers; facial and body washes; soaps; shampoos; and body lotions.” The Trademark Examiner issued an Office action in which he found the coupon to be an unacceptable specimen and eventually made the refusal to register final. After remanding to the Examining Attorney after a Request for Reconsideration, the Board finally reversed the refusal and found the coupon to be an acceptable specimen showing use of the mark in commerce.

The decision tracks the language of Section 45 of the Trademark Act (“the Act”) which states that a mark is deemed to be used in commerce when “it is placed in any manner on goods or their containers or displays associated therewith or on the tags or labels affixed thereto.” The holding turned on whether the coupon could be considered a “display” within the meaning of the Act. Ultimately, because the coupon displayed Johnson & Johnson’s goods, showed the applied-for mark next to the goods, identified the retailer where the goods could be bought, and was dispensed to the customer in the very store where the goods were located, the Board found that the presentation of the coupon to the customer began the association of the mark with the goods.

So does this mean that every clipping from the Pennysaver is enough to earn trademark rights? Probably not. But with a well-known brand and a coupon that nails the specifics of mark identification, the decision could represent a foot in the door for more creative point of sale “displays.”

For both new and existing businesses, new generic top-level domains (gTLDs) offer increased flexibility and opportunities for an expanded online presence. A gTLD is the part of a web address that comes after the “dot” (“.”). Historically, gTLDs were limited to only a few, such as “.com,” “.org” or “.net.” However, in 2012, the Internet Corporation for Assigned Names and Numbers (ICANN) began accepting applications for new gTLDs, and the first new gTLDs went live in 2013. Some of the new gTLDs are company and brand names such as .Abbot or .Amex, while others are descriptive, for example, .book, .clothing, .flowers and .pharmacy. A list of the new gTLDs and their release dates can be found here. The trademark issues arising out of the new gTLDs are many — here we explore their impact on trademark applications both for new applicants and existing trademark holders.

Generally, the new gTLDs will have little impact on the trademark application process aside from choices for trademarks that might also double as domain names. That is, the process to register yourname.shopping will be the same as the process that has applied to registering yourname.com. In both instances, the mark must be distinctive and in use. In addition, unregisterable matter, such as descriptive or generic terms and non-source-identifying gTLDs may need to be disclaimed. In our example, “.com” and “.shopping” are both technically unregisterable matter. With that said, in many instances the U.S. Patent and Trademark Office (USPTO) has allowed such marks to register, without any disclaimer of the “.com” or “.shopping” portion of the mark. Thus, applications for marks that include a non-source-identifying gTLD are likely to receive the same treatment by the USPTO as marks did before the introduction of the new gTLDs.

If a gTLD has source-indicating significance (.yourbrand), it may be registrable as a trademark. However, not every gTLD will qualify as a trademark. If the proposed mark is perceived merely as part of a website address, it will not be registrable. In addition to the requirement that the trademark is source-identifying, the applicant of such a mark will have to show that (1) he/she has registered the gTLD with ICANN, and (2) the services provided will primarily be for the benefit of others. As of now, there are few businesses or individuals that have taken advantage of this new trademark opportunity. But as these new gTLDs are launched and their presence becomes increasingly important, we may see an increasing number of trademarks composed solely of new gTLDs.

In a recent blog post, we talked about how it is possible in the U.S. to file a trademark application on your own, and why it may not be such a good idea. Besides having a working knowledge of classes of goods and services, dates of first use and the need for searching, there is another good reason why you may want to not file yourself: The Dreaded Third-Party Service Offerings.

These third-party communications look, feel and smell like genuine invoices, asking the U.S. applicant to pay upwards of $2,000 per “recordation of trademark.” They come from official-sounding organizations such as “International Patent and Trademark Organization (IPTO)” or “World Patent & Trademark Services (WPTS).” Furthermore, they don’t look to be service offerings — the letters appear to be an invoice for work already completed. The letters may even look as if they come from the U.S. Patent and Trademark Office (USPTO) or a foreign trademark office. Regardless of source, they look official and are a genuine scam.

Recently, a mark we are responsible for went to registration. The address for service in the registration was to our attention. On a single day, we received four different letters (in separate envelopes) from four apparently different organizations. Each one resembled an invoice and was for a different amount of money (the least of which was $2,400 U.S.).  If the applicant decided that they should pay all of these, their modest U.S. application fee could quickly turn into a $10,275 fee.

When reviewing these solicitations, you will see that the terms and conditions of the “agreement” appear on the back of the invoice in the very lightest of colors and the smallest of fonts in which they disclaim any association with a government agency. The USPTO has issued warnings on its website and in the communications to applicants upon the electronic filing of the applications. See: http://www.uspto.gov/trademarks-getting-started/non-uspto-solicitations and each new application receives the following paragraph as part of the USPTO standard response:

WARNING ABOUT UNSOLICITED COMMUNICATIONS: You may receive trademark-related communications from private companies not associated with the USPTO. These communications frequently display customer-specific information, including your USPTO serial number or registration number and owner name, and request fees for trademark-related services, such as monitoring, listings in international publications, and document filing. None of the companies offering these services are affiliated with the USPTO or any other federal agency. All official correspondence will be from the “United States Patent and Trademark Office” in Alexandria, VA, and if by e-mail, specifically from the domain “@uspto.gov.” Please consult the “Warning” page on the Trademarks section of the USPTO’s website for further information about unsolicited communications and to view representative examples of them. For general information on filing and maintenance requirements for trademark applications and registrations, including fees required by law, please consult www.uspto.gov, contact the TrademarkAssistanceCenter@uspto.gov or telephone 1-800-786-9199.

Forewarned is forearmed! If you didn’t ask for a filing to be done, be cautious about these types of communications.

 

A recent article published by World Trademark Review talked about the pros and cons of individuals filing their own trademark applications without the benefit of experienced trademark counsel. First and foremost, individuals may file for their trademarks on their own, and non-lawyers within corporations can file for trademark applications for their company, without using an attorney. Individuals who are not attorneys may not file trademark applications on behalf of other individuals or corporations. Unlike with non-lawyer “Patent Agents,” who may be members of the Patent Bar without having a law degree, the U.S. does not allow for the concept of a “Trademark Agent.”

The real question is “should you file an application without the benefit of counsel?” Of course, the legal opinion on this is “it depends.” First, you must know the rules regarding filing (complete application, proper identification of goods and services, understanding the “intent-to-use” versus the “use-based” application, what is the date of first use, etc.). If the filer is only going to be filing for a finite set of goods, and those goods are identified in the USPTO Manual of Acceptable Goods and Services, and there is little likelihood of expanding the offerings beyond those finite goods, then the answer is “maybe.” If the filer has already conducted at least a screening search, preferably beyond the USPTO website, including both a BING and a Google search, then the answer is a less-qualified “maybe.”

Mr. LeHocky, the “Trademark King” profiled in the linked article, provides an excellent example of where qualified counsel can save a filer time and money.  Mr. LeHocky must have spent in excess of $40,000 in Trademark Office filing fees, alone (the USPTO does not give volume discounts!).  An experienced lawyer would have advised him not to bother filing to register all these marks with “.com” following the name (Disney.com, BMW.com, etc.), as the Trademark Office generally does not allow for trademark registrations that include the .com.  Not to mention that Disney, BMW, et al. just might oppose the trademark filings, in the very unlikely event that the Trademark Office allowed the applications to go to publication.  Famous people and big companies have people that look out after their brands and publicity rights.  Furthermore, Mr. LeHocky’s description of the “use” he intends to make of the marks is problematic.  He described intended use with the statement “selling or leasing to anyone in the world for a legal business activity.”  This creates even more issues for Mr. LeHocky, as U.S. trademark practice tends to frown upon the banking and selling of trademarks without a legitimate intent to use the mark.

This is a true story (well…..kind of…names have been changed to protect the guilty).

I am a technology junkie.  Unfortunately, my addiction to technology led me to buy a first release dishwasher from X.  The dishwasher stopped working the day after the warranty expired.

Sure, I should have purchased a longer warranty.  Sure, I should have bought a proven dishwasher.  Sure, I kicked myself over and over.

I looked for X’s customer service number.  I wanted to make sure that I called a repairman who had the training and know-how to work on the dishwasher.  It took me at least 20 minutes to find a number for X; when I called that number, it took at least 30 minutes to reach the correct department.  When I finally reached the right person, he chastised me for not buying the extended warranty.  Then, I was given the contact information for three repairmen who were trained on my dishwasher.  The first two had gone out of business.  When I finally got a hold of the third one, he had to schedule me a week out.  I was flustered.

When the repairman showed up, he had no idea what was wrong with my dishwasher.  He indicated that he would consult with X and come back the following week.  When he came back, he didn’t have the right parts and, he would have to order them from X.  Of course, for whatever reason, X could not overnight my parts.  It would be another week and a half before the repairman would receive the needed parts from X.  When the repairman showed up again, the parts he ordered did not fix the dishwasher.  This cycle went on for the next six months.  Sure, a smarter person would have just bought a new dishwasher.

At the first month mark, I felt more than just flustered: X could not get parts out to the repairman quickly; and the repairman who was certified by X, but could not fix my dishwasher.  I needed to vent.

I Googled “X customer service” to find an email or snail mail address were I could send my complaints.  To my surprise, GoDaddy® popped up telling me that the domain “xcustomerservice.com” was for sale for a low, low price.  And, so my blogging career started.

I used this venue to catalog my experience with X, and encouraged others to share their experiences.  I even used X’s logo on my website.  Subconsciously, I was daring X to sue me so that I could tell the world about its defective product and its worse customer service.

What could X do to stop me?  X did not register the domain name I used which incorporated X’s name, and I was clearly using X’s name and logo to draw consumers to my site.

X could have litigated the issue.  Courts and judges have the authority to award control and ownership over domain names (just as they have authority to award control and ownership over any other property).  If the action was based on trademark law, X would have to prove that consumers would confuse the product/services I was selling with those products/services that X was selling; that there was a “likelihood of confusion”.

X could have brought action based on Anti-cybersquatting Consumer Protection Act (the “Act”).  Theoretically, the Act made it easier for registered trademark owners to take over domain names that are confusingly similar the registered trademarks.  Under the Act, X would have to establish that I acted in bad faith.  A court would consider the following factors to make a finding of bad faith:

  • Does the domain name holder have trademark rights in the domain name?
  • Is the domain name the legal name of the domain name holder, or some other name that is otherwise commonly used to identify that person?
  • Has the domain name holder made use (prior to the dispute) of the domain name in connection with a bona fide sale of goods or services?
  • Is the domain name holder using the mark in a bona fide noncommercial or fair use way at a web site accessible at the domain name?
  • Is the domain name holder attempting to divert consumers from the trademark owner’s web site in a confusing way, either for commercial gain or in an attempt to tarnish or disparage the trademark mark?
  • Has the domain name holder offered to sell the domain name to the trademark owner (or anyone else) for financial gain without having any intent to use the mark with the sale of goods or services?
  • Has the domain name holder behaved in a pattern of registering and selling domain names without intending to use them in connection with the sale of goods or services?
  • Did the domain name holder provide false information when applying for the registration of the domain name (or do so in connection with other domain names)?
  • Has the domain name holder registered domain names of other parties’ trademarks?
  • How distinctive and famous is the trademark owner’s trademark?

X could sue me under the theory of slander/defamation.  Truth is the defense.

Courts are notoriously slow and expensive.  I’m sure X would want to put a gag on my blog quickly and cheaply – before I could do any more damage to X.

Alternatively, X could bring action under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) created by ICANN and used by all accredited registrars.  Under UDRP, a trademark owner can initiate a relatively inexpensive administrative procedure to challenge the existing domain name.  A trademark holder will win under UDNDR only if ICANN found the following three factors to be true:

  • that the trademark owner owns a trademark (either registered or unregistered) that is the same or confusingly similar to the registered second level domain name;
  • that the party that registered the domain name has no legitimate right or interest in the domain name; and
  • that the domain name was registered and used in bad faith.

X could show that I had no legitimate right or interest in the domain name by showing that I:

  • registered the name primarily for the purpose of selling or transferring the domain name to the trademark owner or a competitor of the trademark owner for a price greater than out of pocket costs;
  • engaged in a pattern of registering trademarks of others to prevent the use of the domain name by the trademark owner;
  • registered the domain name primarily to disrupt the business of a competitor; or
  •  attempted to attract users to a web site for commercial gain by creating a likelihood of confusion with X’s trademark.

The lesson to be learned here?  Have good customer service or, at least, buy domain names that have words that your customer will search for like:  YourNameCustomerService and YourNameSucks.  It is nearly impossible to buy all the domain names that have YourName in it.  However, with a little planning, you can figure out the most important ones.

How did my story end?  Well, X gave me a new dishwasher and that domain name…let’s just say it now belongs to its rightful owner.