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Entries in trademark development (5)

Monday
Jun262017

Disparaging, Degrading, Derogatory Trademarks: They're Now Enforceable Says Supreme Court

 

Franchise and Trademark LawyerIntellectual Property Lawyer

 

 

by Tal Grinblat

(818) 907-3284

 

You may remember that several national sports franchises are under fire for trademarks and branding that is seen to be racially disparaging. The Washington Redskins are the first team to come to mind, and it wasn’t too long ago that we all thought they had an uphill, and probably losing legal battle to keep their name registered.

Trademark Law

That battle is likely over now that the U.S. Supreme Court weighed in on a trademark dispute for a rock band.

At issue? First Amendment rights. And the Court decided definitively and unanimously to uphold those rights, though the individual justices cited different reasons for doing so.

The Slants Challenge USPTO

Simon Tam is the lead singer for The Slants – a name the all Asian-American, Portland group was unable to register with the U.S. Patent and Trademark Office (USPTO) because the agency found the moniker to be disparaging, if not outright racist. In reaching its decision, the USPTO found that the word “slants” is a derogatory term for persons of Asian descent and that a substantial composite of persons would find the mark to be offensive.

It therefore refused registration relying on the Trademark Act provision, which allows for trademark registration refusals if a mark:

Consists of or comprises 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; . . .

Tam appealed the refusal to the Trademark Trial and Appeal Board. When the Board sided with the Examining Attorney at the agency, Tam filed a lawsuit, which took him on a seven year trek through the justice system, and ultimately to the Supreme Court. “This journey has always been much bigger than our band: it’s been about the rights of all marginalized communities to determine what’s best for ourselves,” Tam said.

Why did the Supreme Court Side with The Slants?

Band members contend that though “Slants” is a racially-charged term to describe persons of Asian descent, using the term for the name of their band would dilute the denigrating aspects of the word. The Court Opinion said the band hoped to “reclaim” and “take ownership” of stereotypes about people of Asian ethnicity.

In delivering their opinion, Justices Samuel Alito, Clarence Thomas and Stephen Breyer sided with the Band and against the government, ruling:

We now hold that this provision violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment prin­ciple: Speech may not be banned on the ground that it expresses ideas that offend. . .

Procedurally, trademark examiners were required to use a two part test to determine if a mark is disparaging. They considered the likely meaning of the mark, including dictionary definitions, relationship of the matter to other elements in the mark, nature of the goods and services and manner in which the mark is used in connection with the goods and services.

If the mark refers to specific persons, institutions, beliefs or national symbols, the examiner then was required to consider whether or not the mark is disparaging to a substantial composite of persons given contemporary attitudes. If that proves to be true, the trademark applicant must prove the mark is not disparaging to continue with registration, generally an uphill battle.

In defending the claim that the USPTO’s decision did not violate the Band’s First Amendment free speech rights, the Government contended that:  

  1. Trademarks are government speech, not private speech;

  2. Trademarks are a form of government subsidy; and

  3. The constitutionality of the disparagement clause should be tested under a new ‘government-program” doctrine. 

The Supreme Court rejected all three USPTO arguments.

Regarding the first argument, the Supreme Court explained that “[t]rademarks have not traditionally been used to convey a Government message” and that trademarks are private (coined by individuals to name their products and services) and not government speech. They explained:  

Holding that the registration of a trademark converts the mark into government speech would constitute a huge and dangerous extension of the government-speech doctrine. For if the registration of trademarks constituted govern­ment speech, other systems of government registration could easily be characterized in the same way. . .

As to the USPTO’s second argument, the Court found that trademarks are not a form of government subsidy, as the USPTO is not paying trademark applicants to register their marks, but rather it is the applicant who must pay a filing fee as well as renewal fees to keep the trademark on the Register.

As to the USPTO’s third argument, Justice Alito stated the U.S. Supreme Court has already ruled repeatedly that “the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers,” and that “government may not prohibit the expression of an idea simply because society find the idea itself offensive or disagreeable”.

Therefore, the disparagement clause in the Trademark Act could not be saved by viewing it as a type of government program in which some content and speaker-based restrictions are permitted.

Disparagement Clause Found Overbroad and Unenforceable

free-speech-trademark-lawThe next matter the court considered was under what standard the band’s free speech rights should be viewed – specifically, whether trademarks should be viewed under the more relaxed scrutiny of commercial speech (whereby speech may be more easily restricted) or expressive speech which warrants a higher level of scrutiny.  

The Court found that it did not need to resolve this debate because the “disparagement clause” could not withstand either level of scrutiny. For commercial speech to be curtailed, it must serve a “substantial interest” and must be “narrowly drawn”.

Here the Supreme Court found that the disparagement clause failed this requirement as the “clause reaches any trademark that disparages any person, group or institution.”  In other words, the Clause goes further than necessary to serve the interest asserted. If the government could curtail any speech by labeling it a commercial speech, free speech would be endangered.

Accordingly, the Court held that the disparagement clause violated the Free Speech clause of the First Amendment resulting in the band finally being able to register their mark.  

Practical Implications for Brands Like The Slants

This seminal Supreme Court decision changes trademark law in a significant way.

The Disparagement Clause was part of the original Trademark Act passed by Congress in 1870, nearly 150 years ago. It has been used by the USPTO to block what the agency deemed offensive marks for over a century.

The Supreme Court’s decision now will allow both individuals and companies to register expressive brands regardless of whether the message is offensive, hateful or inappropriate. But that is a little price to pay to protect our freedom of expression. As the Court indicated, “the proudest boast of our free speech jurisprudence is that we protect the freedom to express ‘the thought that we hate’”. 

 

Tal Grinblat is an Intellectual Property Attorney and a Certified Franchise & Distribution Law Specialist.

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.

Thursday
Apr112013

Why Register a Domain Name? Intellectual Property Protection to Start

Business LitigationSan Fernando Valley Business Litigation Lawyer

by Nicholas Kanter
818.907.3289

Business Litigation Google+ 

 

A political organization recently learned the hard way that possession, including possession of intellectual property, is nine-tenths of the law.

In January, after helping President Obama win reelection, Obama for America announced it was switching focus to a grass-roots organization and changing its name to Organizing for Action. The announcement was made before OFA registered the domain, www.organizingforaction.net.

On the day of the announcement, an individual named Derek Bovard registered www.organizingforaction.net.  Initially, Mr. Bovard reportedly set the domain to redirect to the National Rifle Association’s website. Currently, the OFA website redirects to Dr. Benjamin Carson’s speech at the National Prayer Breakfast.

OFA filed a complaint with the National Arbitration Forum [the complaint was filed in accordance with Internet Corporation for Assigned Names and Numbers’ (ICANN’s) Uniform Domain Name Dispute Resolution Policy] seeking an order transferring the domain name from Mr. Bovard to OFA.  In support of its complaint, OFA alleged:

  1. It owned trademark rights in the name Organizing for Action;

  2. Mr. Bovard’s www.organizingforaction.net is confusingly similar to OFA’s trademark;

  3. Mr. Bovard has no legitimate right or interest in the trademark; and

  4. Mr. Bovard registered the domain name in bad faith.

The arbitration panel found in favor of Mr. Bovard, concluding that OFA did not prove that it established trademark rights in its name prior to Mr. Bovard’s registration of the domain.

This makes sense as trademark rights are based on use, and OFA apparently did not use the Organizing for Action name before Mr. Bovard’s domain was registered. In fact, Mr. Bovard argued that he registered the domain at 5:46 a.m. on January 18, 2013, approximately nine hours before OFA legally become a group. Accordingly, the panel denied OFA’s request to transfer the domain name.

What should OFA have done differently? Clearly, before announcing the name change, OFA should have registered the domain. Unfortunately, OFA learned that conceptualizing a name is not the same as securing property rights in the name.

 

Nicholas Kanter is a Shareholder in our Business Litigation Practice Group. You may reach him via email: nkanter@lewitthackman.com. 

 

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.
Wednesday
Mar132013

Five Tips for Developing and Protecting Your Trademarks

Business Litigation & Trademark Enforcement

 

by Nicholas Kanter & Tal Grinblat
March 13, 2013

 

A trademark is a word, phrase, design, logo, sound or color used to identify the source of a party’s goods or services. For many companies, their trademark can be their most valuable asset because of the association consumers have with the products or services bearing the particular mark.

For example, when a person sees a computer bearing Apple’s iconic logo, that person associates the image with a company known for manufacturing high quality computers, phones and tablets with certain user-friendly functions and qualities for which Apple is known.  This association is the result of Apple’s extensive advertising, promotion and sales of its Apple-branded products.

Before adopting a trademark and developing goodwill in the mark, it is important to research whether there are any significant obstacles that may prevent using the mark in the future. If after conducting the search you determine to move forward, it is equally important to protect your mark to prevent others from using or adopting your mark without permission.

 

How to Develop and Protect Your Trademark

 

1. Perform a Trademark Search:

In the U.S., trademark rights are acquired based on use. With certain exceptions, the first person to adopt and use a particular trademark generally obtains superior rights to use that mark over all other junior users.

Before adopting a mark, it is a good idea to order a comprehensive trademark search report. A search report will tell you about others that may already be using your desired trademark (or similar trademark). Knowing who else may be using your desired mark can help you assess the risks of moving forward with the mark, or prompt you to come up with another trademark.

 

2. Register Your Trademark:

If the trademark search report does not reveal any significant obstacles to the use of your desired trademark, you should apply to register your mark with the United States Patent and Trademark Office (USPTO). Although trademark rights are based on use, a federal registration on the Principal Register of the USPTO has many significant benefits, including a legal presumption that you own the registered mark and your exclusive right to use the registered mark for the goods/services for which your mark is registered nationwide.

If you sell or plan to sell products or services under your trademark outside the U.S., you can protect your mark by registering it with the appropriate trademark agency in each applicable country. This can be done by filing a trademark application in each desired country, or by filing a single application via the Madrid Protocol, and then seeking to extend the protection granted to the other countries selected. 

 

3. Use and Promote Your Trademark:

The primary purpose of a trademark is to identify the source of the goods/services you’re selling. Therefore, it is important to use and promote your trademark so that the public associates the mark with you, and the goods/services you sell.

Non-use can lead to the cancellation of your registration.  Moreover, the strength of your mark, and your right to exclude others from using your mark, will increase with greater public recognition.

 

4. Make All Required and Optional Post Registration Filings:

To maintain the trademark registration, you must make certain required filings. In the U.S., the owner of a registration must file a “Declaration of Continued Use” between the 5th and 6th year of the registration. At the same time, the registrant can file a “Declaration of Incontestability” to make the trademark registration “Incontestable.”  In addition, a trademark registration must be renewed every 10 years by filing a renewal application between the 9th and 10th years of registration.  

    

5. Police and Enforce Your Rights in Your Trademark:

As the owner of a trademark, you have the obligation to police your mark to prevent unauthorized third parties from using it. Failure to do so can lead to losing the exclusive right to use your mark.

If someone else is using your mark without authorization, you can send a “cease and desist” demanding that the person cease using your mark. If the unauthorized user applied to register your mark, you can oppose the registration of the mark by filing an “Opposition” with the Trademark Trial and Appeal Board. Finally, you can file a lawsuit for trademark infringement if the unauthorized user refuses to stop using your mark.

 

Nicholas Kanter is a Business Litigation Attorney experienced in intellectual property enforcement and defense litigation. Contact him via email: nkanter@lewitthackman.com for more information regarding intellectual property enforcement.

Tal Grinblat is a Trademark Attorney and Certified Specialist in Franchise and Distribution Law (California State Bar Board of Legal Specialization). Email: tgrinblat@lewitthackman.com for further details on establishing trademarks and franchises, and protecting trade secrets.

 

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.
Thursday
Feb162012

Intellectual Property Law - The Madrid Protocol Promotes Global Trademark Protections

 

Franchise Agreement LawyerState Bar Certified Specialist, Franchise & Distribution Lawby Tal Grinblat
818.907.3284

 

American based companies wanting to protect their trademarks internationally have been able to do so fairly easily since 2003, when the United States adopted the Madrid Protocol.

The Madrid Protocol is an international treaty currently recognized by 84 countries. It allows a U.S. based business that has a pending trademark application or registration in the U.S. Trademark Office apply to register the identical mark in other member countries of the Protocol, using a fairly simplified procedure.

The benefits of using the Protocol are fairly extensive. Instead of applying to register a mark separately in various countries, the applicant can file one application with the US Trademark Office which then automatically gets sent to the countries designated.

You no longer need to hire local trademark counsel in individual territories (unless objections are raised to the application at any stage). You also pay for the applications in US currency, thereby eliminating the need for wire transfers. Once an international registration is issued, there is also a simplified process to renew the trademark and a simplified manner to record address changes and other information, such as a sale of the mark to other parties. In addition, after an international registration issues, it’s possible to request an extension of protection to other member countries without having to start the process again.

Which countries are members of the Madrid Protocol? They range from Albania, Bhutan and China, to Uzbekistan, Vietnam and Zambia – but you can access the complete Madrid Protocol List of Countries here. Application fees vary by country.

 

Your Trademark: Meeting International Requirements

 

Your international application must be based on a U.S. (or local) application or registration, called a "basic application" — you cannot file internationally without it.

  1. The mark and the owner of the international application must be the same as the mark and the owner of the basic application.
  2. The international application must include a list of goods and services identical to or more narrow than the list on the basic application.
  3. The applicant must pay the U.S. certification fees at the time of submission as well as the application filing fees for all countries to which protection is sought.
  4. The applicant must identify at least one Contracting Party for an extension of protection.

If the application meets these requirements, the World Intellectual Property Organization (WIPO) located in Geneva, Switzerland, will register your mark, publish it in the WIPO Gazette of International Marks, and send you a certificate as the "holder of the international registration."

The International Bureau will then notify the Contracting Parties you designated in the international application. The designated countries will then review the application (as they would review any other application filed directly with them). And if no impediments or objections are raised, a registration ultimately is issued and forwarded to the applicant.

Due to the pitfalls involved in this multi-step process, trademark owners are encouraged to consult with experienced trademark counsel to provide guidance on, explain the process and assist with filing the international application. And if any objections or impediments are raised during the prosecution, trademark counsel can also direct the applicant to local counsel in the countries involved for assistance.

Tal Grinblat is an Intellectual Property Attorney, and a Certified Specialist in Franchise and Distribution Law, as designated by the State Bar of California's Board of Legal Specialization. If you have questions regarding intellectual property, trademark protection or franchising a business, call him at 818.990.2120.

 

 

 

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.

Thursday
Aug252011

Seeing Louboutin Red - The Battle for a Trademarked Sole

 

Franchise Agreement LawyerIntellectual Property Attorney

 

by Tal Grinblat
818.907.3284

 

People rarely associate color with a trademark.  But protecting Louboutin Red as a trademark has become a central issue in designer shoe-maker Christian Louboutin’s dispute with Yves St. Laurent.

U.S. Trademark law protects many kinds of marks.  These range from words, logos, slogans, distinctive scents connected with products, sounds and even color (if one can prove the public associates the color with one’s products or services). 

In 2008 Designer Christian Louboutin was able to register several trademarks containing his famous red color, which he named “Loubutin Red”.  These are shown below.

Trademark Law and ColorLouboutin claims that by virtue of his use of this vibrant, iridescent color over several decades, members of the public now have come to associate Loboutin red exclusively with Louboutin shoes and leather bags.  The color has become associated with high fashion, designer items. 

Louboutin Red and Intellectual Property LawMany will recognize a Louboutin shoe almost immediately, spotting the red-lacquer flashes of distinction as fashionable women click by you on the sidewalks on their way to work, at parties, or while leisurely perusing the wares at other designer stores.

The shoe designer has been undercoating his footwear with the shade since 1992. As a color, it’s distinctive, particularly on the sole of a shoe. 

But a district judge in New York may be stepping on the designer’s toes, leaning more towards competitors like Yves St. Laurent who may want to paint the town (and their shoes) red as well. 

On August 10th the district judge refused to grant a preliminary injunction stopping Yves St. Laurent from selling shoes with a red sole that Louboutin says infringe his trademark. The judge did not believe that a designer could trademark a color. According to U.S. Justice Victor Marrero:

“Color serves ornamental and aesthetic functions vital to robust competition . . . Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection.” 

If Yves St. Laurent is successful in contesting Louboutin’s trademark rights to the color red, the trademark may be canceled. If that happens, the French-based Christian Louboutin S.A. will likely step up their fight against Yves St. Laurent and take the case to the Supreme Court. 

If Loubutin loses their trademark infringement case, the loss may open the door for other shoe companies to start painting their soles Louboutin Red.  Should that happen, distinguishing the real Louboutin shoe from others will be a real “feet”.   

Tal Grinblat is a Los Angeles Intellectual Property Lawyer and California State Bar Certified Specialist in Franchise and Distribution Law, as designated by the Bar’s Board of Legal Specializations. Contact him by calling 818.990.2120 or via e-mail: tgrinblat@lewitthackman.com.

 

Disclaimer:

This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.

 

 

LEWITT HACKMAN | 16633 Ventura Boulevard, Eleventh Floor, Encino, California 91436-1865 | 818.990.2120