Category Archives: Business Law

Scandalous Material

On December 22, 2015, The United States Court of Appeals for the Federal Circuit weighed in on the question of politically correct speech in the context of trademark registrations. In In Re Tam, an applicant for a trademark challenged the U.S. Patent and Trademark Office’s rejection of his application on the grounds that the proposed mark was “scandalous” under Section 2(a) of the Lanham Act.

 

The mark in question,  THE SLANTS, is the name for a musical group based in the Pacific Northwest comprised of musicians of Asian-American background. The trademark application was submitted by Simon Tam, an Asian-American, who serves as lead singer for the band. Mr. Tam chose the name ironically and adopted it as an opportunity to take control of the term.

 

The Federal Circuit heard the dispute en banc and concluded that use of a trademark term is private commercial speech and therefore protected by the First Amendment. The government, the court writes, has no business trying to regulate it by denying the band a trademark.

 

In upholding Mr. Tam’s right to obtain Federal registration for his band name, the Federal Circuit determined unconstitutional that portion of Section 2(a) of the Lanham Act which bars the registration of “scandalous” words. In doing this, the Federal Circuit Court of Appeals overruled its own thirty year-old holding and struck down a portion of the Federal trademark law that has been unquestioned since adopted in 1946.

 

The Federal Circuit reasoned that First Amendment jurisprudence had matured in 2015 to the point where the Patent and Trademark Office should not be accepting or rejecting marks for registration based upon a subjective contextual determination of offensiveness. Suffice to say, without repeating them here, that the Trademark Office pattern in disapproving some trademark applications and approving others has been highly situational.  Indeed, there are countless trademark registrations incorporating the word “slant” which the Trademark Office has found to be not objectionable, applying their analysis subjectively.

 

The decision in In re Tam found that the Trademark Office’s application or Section 2(a) “does more than discriminate on the basis of topic. It also discriminates on the basis of message conveyed…” (Opinion at 19). In summary, the anti-disparagement provision of Section 2(a) was found to be “viewpoint discriminatory on its face” (Opinion at 21).

 

The Federal Circuit also rejected positions arguing that issuance of a Federal registration was somehow approval or certification by the U.S. Government for the views expressed in the trademark.

 

In re Tam may not be the final word on this matter, since the U.S. Supreme Court is unlikely to avoid taking a look at the issue, given the sixty years that the statute remained unchallenged and the implications for First Amendment law.

 

For more information about this or any trademark or IP issues, please contact Fred Frawley (afrawley@eatonpeabody.com)

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Trademark Office Reduces Fees for Application

 

Whilst counterintuitive, the United States Patent and Trademark Office has issued a new fee schedule, effective Jauary7 17, 2015, which actually has the effect of–in most cases–reducing the fees to be paid for applying for trademark protection. The new fees can be found here.

This restructuring of fees is driven by the Trademark Office’s desire to encourage electronic filing applications and follow-on communication with Trademark Office personnel . The new fees are designed to incent paperless filing and simple, well thought out choices in trademark applications.

TEAS is the electronic filing system of the U.S. Trademark Office and the new fees encourage greater use of the TEAS system.

  • $50 fee reduction for filing a trademark application using the regular TEAS application form (dropping from $325 per class to $275 per class)
  • $50 fee reduction for a TEAS Plus application (dropping from $275 per class to $225 per class)
  • $100 fee reduction per class for a TEAS renewal application (dropping from $400 per class to $300 per class)
  • In addition, there is a new fee/application category, TEAS-RF, which allows for extension of protection to the United States for marks under the Madrid Protocol (for international marks) into a U.S. trademark application will be reduced to $275, which is $50 less than the regular TEAS application fee.

 

Paper applications are still accepted, but they are not favored.  Paper applications require submission of a fee of $375.

The Trademark Office relies greatly on telecommuting professional to handle its workflow. As reported in 2013:

Today the agency has almost 8,000 employees who work remotely from one to five days per week, including 4,100 who do so four to five days per week and more than 1,000 who work far outside the commuting range of USPTO’s Alexandria, Va., headquarters. And although there are undoubtedly still papers in some employees’ briefcases, the agency’s telecommute-friendly workflows are now entirely electronic.

So, the new fees not only save trademark owners money, they also encourage them to use the electronic system which works best for the Trademark Office’s workflow.

 

Just Walk Away-Muzak

Word comes today that the venerable (i.e. old-timey and pretty much outmoded) background music service Muzak is being euthanized. At least its name is. The mind-numbing background music which had bowdlerized popular music into music beds acceptable for the masses for many years has a new name-Mood.

We speak often here about how a brand or trademark is a vessel into with all customer associations  -positive or negative- are poured. What comes out of witches brew of positive and negative associations is brand equity what a name stands for. There are a lot of data models and even euphemism for this, but that’s essentially what it means to be a brand.

Over time, Muzak became distinctive for background music in retail establishments, elevator and public spaces. But, along with its distinctiveness, negative associations developed. I remember, having joined the professional workforce in the 1970’s, hearing “reimaginings” (really super-pop re-orchestrations) of songs in the Beatles catalog and thinking how weird it sounded. Of course, 40 years on, everything is Autotuned, sampled and reimaginged to satisfy current tastes/standards. But Muzak, got tagged with the “weak schlock” descriptor (accurate but harsh), and never really shook that.

In the end, name recognition did not outweigh others factors and Muzak’s owners will keep the service, but cease the name.

Don’t Tase Me, Bro

Thus spaketh Mr. Andrew Meyer in 2007 when he was, well, having a electrical impulse of mind-numbing proportions applied by a first responder using a TASER brand stun gun.

So what’s that got to do with THINKINGIP? Plenty. It turns out that the manufacturer of the TASER objects to the used of “tasering” and “to tase” as a verb. They’ve got a point, although they may be a little late. When a registered trademark goes from a source identifier to a general desription of something, it runs the risk of losing trademark status.  As reported in The Huffington Post, a spokesman for the company Steve Tuttle “admitted that the battle is becoming something of a headache. “If you do [say ‘Tasered’] you bastardize the word,” Tuttle said. “The US Trademark Office can declare your trademark null and void if you’re not protecting your copyright.”

No wonder there is a problem. The company is at least 5 years too late worrying about their problem and Mr. Tuttle is confusing “trademark” and “copyright”. So, there’s not a very well thought out plan there.

Part of the problem, aside from not understanding the issues, is coming up with a descriptive verb for the act of have a TASER applied to a person. XEROX came up with “machine copy”. FEDEX tries “overnight delivery”. CELLOPHANE came up with nothing and lost its mark. Same with ASPIRIN. TASER? “electronic mind-numbing kablooie”? That doesn’t really work.

More nonsense. The aforementioned Mr. Meyer was interviewed by Kaplan University-owned Washington Post which reported “Meyer trademarked the phrase “Don’t tase me, bro’’ in September 2007” Also not true. One Avi Faskowitz filed an application for the mark for shirts in 2007, Serial No. 77287584, but it was abandoned in 2011, and the mark never issued.

WHY IP? WHY THINK IP?

Why Intellectual Property? It’s a question I get a lot, from people who know that IP issues are on the top of my professional mind.

(Fortunately, that’s not all that’s on my mind, but the question of why The Infamous Stringdusters are not as lauded as Beyonce is a question for another day.)

Well, let’s start here: ” intellectual property accounts for 20% of U.S. GDP, and nearly 40% of economic growth. Furthermore, IP industries account for 74% of the county’s exports, amounting to $1 trillion.”  Think that one over. We don’t make things here, much, anymore. We develop ideas and neat, efficient implementations of ideas. Even where we would seem to be leaders in manufacturing, such as the automotive industry, not a car would be made without parts outsourced from Mexico, China, Japan , you name it. The Chevy Aero has 98% of its parts sourced outside the U.S. The Ford Expedition? 50/50.  That’s where we are going. So, that is “Why IP?”

I recently rebranded this blog and my Twitter feed to THINKINGIP for that very reason. The kinds of knowledge based solutions (and problems) that arise in everyday life, and most certainly in the life of an IP attorney such as me are mind-numbing. Yet, they must be attended to. There is a burgeoning industry of court actions by “trolls” (more benignly known as Non-Practicing Entities)  who seek damages for new implementations of existing exclusively-protected rights (whether patent or copyright). One might conclude that we are essentially eating our young, but that’s what happens when things are built elsewhere.

To review the kinds of things I’ve discussed, or Tweeted about over the last few weeks:

Chuck Shumer promotes fashion design copyright now that Sandy is not a problem. http://dld.bz/bSCbm 

North Face tries to stop trademark parodies. http://dld.bz/bSBZZ 

Audi doesn’t get http://Audicity.com . No bad faith. http://dld.bz/bSuFG 

IP protection for aboriginal cultures. http://dld.bz/bSuEV 

Some gruel, please, sir? Copyright Office wants to hear what you think about “the state of play of orphaned works” http://dld.bz/bSuE2 

Easter Egg in iOs6 privacy policy? http://dld.bz/bSuEv  

Copyright trumps state law claims. http://dld.bz/bSuEg  

When a customer list can be a trade secret. In Cali. http://dld.bz/bRXV4 

How to brand your baby, PTO-sssstyle. http://dld.bz/bRXUu  #THINKINGIP

Three words. Cloud. Security. Nightmares. http://dld.bz/bRKFQ 

Republicans Retreat On Copyright Reform? http://shar.es/G95RM  via@sharethis

Updated post on GOP’s pulling Copyright Report for lack of “balance”https://frawleylegal.wordpress.com/2012/11/18/copyright-reform-just-dont-tell-mickey/ …

Wow, who saw this coming? (everybody) digital borrowers of book also buy books, a lot. http://dld.bz/bRKFh 

Twinkies to fold. http://dld.bz/bRKMu  Lots of sweet IP http://dld.bz/bRKMC 

Cy pres award to advocacy groups disfavored in some class action settlements. http://dld.bz/bRKE2  Plaintiff’s counsel still eat well.

And on and on.  So, that’s WHY IP? Please follow me @#THINKINGIP on Twitter. There are no discernible prizes (yet), but you might get a chuckle.

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Orphan IP?

The news that Hostess Brands is shutting down its operations as a result of a nasty labor dispute broke today. A quick search of Trademark Office records shows that they have a hundred or more active marks, including TWINKIES,  HO HO’S, DING DONGS and HOME PRIDE BREAD. The company is reportedly operating under bankruptcy court protection, so, fear not, somebody else will come in to gobble up those tasty brands.  Kodak recently reached a deal with bondholders for $793 million in loans that could help take the onetime photography icon out of bankruptcy proceedings if it sells a collection of patents for at least $500 million, the company said. The once mighty industrial company (Kodak, I mean) is being sold for scrap, but what a large pile of scrap- $500 million.

Hostess Brands has some strong marks, and the individual parts may be greater than the ongoing baking enterprise.

Do not underestimate the value of brands, even sweet, squishy ones.

Creative Economy

We hear a lot about this, but it is real. Here in New England, the woods (metaphorically) are fully of smart, creative, lively people. You see it in the visual arts, music and fundamental craftsmanship. Today, CNN reports that 4 of the 6 New England states rank (per capita) in the ten states with the most patent activity in 2011. I see it every day, and believe it. Sure California, Washington State and Oregon are on the list. But Vermont? Yes. New Hampshire? As well. Maine actually fairs poorly, despite State-financed resources for inventors. Maybe it is time to do some bench marking. None of these states show particularly well in the overall “entrepreneurship” rankings. But, it’s a start.